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IN THE COMPANIES TRIBUNAL OF SOUTH AFRICA
Case No: CT02071ADJ/2024
In the matter between:
INVESTEC BANK (LTD) Applicant
(1969/004763/07)
And
CM INVESTECH (PTY) LIMITED First Respondent
(2023/549046/07)
and
COMPANIES AND INTELLECTUAL PROPERTY
COMMISSION (CIPC) Second Respondent
___________________________________________________________________
Presiding Member of the Companies Tribunal: Nomagcisa Cawe
Date of Decision: 13 May 2026
___________________________________________________________________
DECISION (Reasons and Order)
1. INTRODUCTION
1.1. The applicant is INVESTEC BANK LIMITED , a company duly incorporated
and registered in accordance with the Companies Act 71 of 2008 ( “the Act”),
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with registration number 1969/004763/06, having its registered address at 100
Grayston Drive, Sandown, Sandton, 2196.
1.2 The applicant is the proprietor, in South Africa, of various trade mark
registrations in classes 9, 35, 36, 38 and 42.
1.3 Applicant is a specialist banking and wealth and investment services
provider and has branded offices in the Chanel Islands, Hong Kong,
Ireland, Mauritius, South Africa, Switzerland, United Kingdom and the
United States of America. It commenced trading in South Africa in
1974
and is listed on both the Johannesburg and London Stock Exchanges
1.4 The first respondent is CM INVESTECH (Pty) Limited, a company
duly incorporated in terms of the Act, with registration number
2023/549046/07, and having its registered address at 71 Scott Street,
Rusternburg, North West, 0299.
1.5 Second respondent is the Companies and Intellectual Property
Commission (“CIPC”), an organ of state established in terms of
Section
185 of the Act, having its principal place of business at DTI Campus,
Block F, 77 Meinjties Street, Sunnyside, Pretoria, Gauteng. The
second
respondent is cited only in its official capacity as the custodian of the
companies register and in so far as the relief in the prayers of
applicant’s
Form CTR 142 is concerned.
2 BACKGROUND TO THE APPLICATION
2.1 This is an application for a default order determining, in terms of Section 160 of
the Act, that:
(i) the first respondent’s company name, ‘’CM INVESTECH (Pty) Limited
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does not satisfy the requirements of Sections 11 of the Act; and
(ii) that first respondent be directed to change its name to one that is not
confusingly similar to applicant’s INVESTEC, as provided for in Section 160
(3)(b)(ii) of the Act.
2.2 It is submitted, on behalf of the a pplicant, that applicant tried to resolve the
matter
with first respondent by email on various occasions, with no success.
2.3 Realising that first respondent had not changed its name nor had it responded
to applicant’s letters of demand, applicant approached the Companies Tribunal
(“the Tribunal”) for relief.
The stamped Form CTR 142 was served on the first respondent, electronically,
within the prescribed 5 business days for such service .
2.4 After the expiry of the 20 day period without the first respondent filing an
answering affidavit or changing its name, the applicant applied for a default
order against the Respondent.
3. ISSUES TO BE DECIDED
3.1 The issue to be decided is whether first respondent has infringed Section
11 of the Companies Act and Section 34 of the Trade Marks Act 194/93. In
making out its case for the order against the first respondent the applicant
submits as follows:
3.1.1 The first respondent’s name, “MC INVESTECH (Pty) Limited”,
does not satisfy the requirements of Section 11 of the Act and
that the inclusion of the words ‘’INVESTECH’’ in first respondent’s
name infringes applicant’s registered trade mark.
3.1.2 Applicant’s “INVESTEC” logo is prominently displayed on all its
promotional material in public places and has been since
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inception
in 1974.Therefore, the inclusion of “INVESTECH” in first
respondent’s name would deceive the public into thinking that
there
is an association between the two companies, which is not the
case.
3.1.3 Applicant submits that first respondent could damage applicant’s
name and public image as applicant has no control over the
quality of products or services that first respondent provides or is
likely to provide.
3.1.4 Applicant seeks an order wherein:- (a) first respondent is ordered to
change its name to one which does not incorporate the words
‘’INVESTECH ” and is not confusingly and/or deceptively similar
to the applicant’s name.
(b) in the event first respondent fails to comply with the order prayed
for after 1 month, the second respondent change first respondent’s
name to “K2023/549046/07”.
(c) ......costs of suit to be awarded against the first respondent as
applicant tried to resolve the matter amicably without any success.
3.1.5 Applicant submits that the second part of first respondent’s
name, “INVESTECH”, wholly incorporates the applicant’s trademark
and is phonetically similar to applicant’s “INVESTEC”. It is
therefore a trademark infringement that affects applicant's distinctive
character and repute.
4. APPLICABLE LAW
4.1 Section 11 of the Act provides as follows: “11. Criteria for names of
companies. —
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(1)…
(2) The name of a company must—
(a) not be the same as—
(i) the name of another company, domesticated company, registered external
company, close corporation or co-operative;
(ii) a name registered for the use of a person, other than the company itself or
a person controlling the company, as a defensive name in terms of Section 12
(9), as a business name in terms of the Business Name Act, 1960 (Act No. 27
of 1960), unless he registered user of that defensive name or business name
has executed the necessary documents to transfer the registration in favour of
the company;
(iii) a registered trade mark belonging to a person other than the company, or
a mark in respect of which an application has been filed in the Republic for
registration as a trade mark or a well -known trade mark as contemplated in
Section 35 of the Trade Mark Act, 1993 (Act No. 194 of 1993), unless the
registered owner of that mark has consented in writing to the use of the mark
as the name of the company; or,
(iv) a mark, word or expression the use of which is restricted or protected in
terms of the Merchandise Marks Act, 1941 (Act No. 17 of 1941), except to the
extent permitted by or in terms of that Act;
(b) not be confusingly similar to a name, trademark , mark, word or expression
contemplated in paragraph (a) unless—
(i) in the case of names referred to in paragraph (a) (i), each company
bearing any such similar name is a member of the same group of companies;
…
(c) not falsely imply or suggest, or be such as would reasonably mislead a
person to believe incorrectly, that the company—
(i) is part of, or associated with, any other person or entity;”
4.2 Section 160 of the Act deals with disputes concerning the reservation or
registration of company names and enunciates the jurisdiction of the
Companies Tribunal as follows:
(1) A person to whom a notice is delivered in terms of this Act with respect to
an application for reservation of a name, registration of a defensive name,
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application to transfer the reservation of a name or the registration of a
defensive name, or the registration of a company’s name, or any other
person with an interest in the name of a company, may apply to the
Companies Tribunal in the prescribed manner and form for a
determination whether the name, or the reservation, registration or
use of the name, or the transfer of any such reservation or
registration of a name, satisfies the requirements of this
Act.(emphasis added)
(2) An application in terms of subsection (1) may be made— (a) within three
months after the date of a notice contemplated in subsection (1), if the
applicant received such a notice; or (b) on good cause shown at any time
after the date of the reservation or registration of the name that is the
subject
of the application, in any other case.
(3) After considering an application made in terms of subsection (1), and any
submissions by the applicant and any other person with an interest in the
name
or proposed name that is the subject of the application, the Companies
Tribunal
–:
(a) must make a determination whether that name, or the reservation,
registration or use of the name, or the transfer of the reservation or
registration of the name, satisfies the requirements of this Act; and
(b) may make an administrative order directing-
(i) the Commission to
(aa) reserve a contested name, or register a particular defensive name
that had been contested, for the applicant;
(bb) register a name or amended name that had been contested as the
name of a company;
(cc) cancel the reservation of a name, or the registration of a defensive
name; or
(dd) transfer, or cancel the transfer of, the reservation of a name, or the
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registration of a defensive name; or
(ii) a company to choose a new name, and to file a notice of an amendment to
its Memorandum of Incorporation, within a period and on any conditions
that
the Tribunal considers just, equitable and expedient in the circumstances,
including a condition exempting the company from the requirement to pay
the prescribed fee for filing the notice of amendment contemplated in this
paragraph.”
4.3 Companies Regulation 153 of the 2011 Regulations provides for d efault
orders as follows:
(1) If a person served with an initiating document has not filed a response within
the prescribed period, the initiating party may apply to have the order, as
applied for, issued against that person by the Tribunal.
(2) On such an application “the Tribunal may make an appropriate order -(a) after
it has heard the required evidence concerning the motion, and (b) if it is
satisfied that the notice or application was adequately served”
4.4 Section 34 (1) of the Trade Marks Act (Act 194/93) which states that the
rights acquired by the registration of a trade mark shall be infringed by-
(a) The unauthorized use in the course of trade in relation to the goods or
services in respect of which the trade mark is registered, of an identical
mark or of a mark so nearly resembling it as to be likely to deceive or
cause confusion;
(b) The unauthorized use of a mark which is identical or similar to the trade
mark registered, in the course of trade in relation to goods or services
which are similar to the goods or services in respect of which the trade
mark is registered, that in such a s there exists the likelihood of deception
or confusion.
5. ANALYSIS AND EVALUATION
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5.1 It is evident from the diligent, but futile, efforts of the applicant to engage the
first respondent on the matter that the a pplicant had no alternative but to
proceed with the application for relief , hence the present default application. I
am persuaded that the application of Regulation 153 is appropriate in this
instance, and will thus proceed to deal with the matter on a default basis.
5.2 The question has to be asked whether the f irst respondent’s name is
confusingly similar to that of the applicant and, moreover, would third parties
confuse the f irst respondent as part , associate, affiliate or subsidiary of the
applicant. Applicant has established a good cause to bring the application in
terms of section 160 of the Act and has also shown that first respondent’s
name is confusingly similar to applicant’s INVESTEC, as submitted in
paragraph 3 above.
5.3 Due to the evidence placed by the applicant before the Tribunal it is clear that
applicant has a reputation to protect in the INVESTEC trade mark. This is
further demonstrated by the due diligence with which applicant pursued the
matter. Further, applicant’s registration predates that of the first respondent by
a few decades.
5.4 When the first respondent’s name, CM INVESTECH, and the INVESTEC
trade
mark are used in the ordinary course of business, the average member of the
public would likely assume that first respondent has some association with or
affiliation to the Applicant, which is not the case.
5.5 Applicant has succeeded in establishing that its trade mark rights have been
infringed by the first respondent and it has established a clear right to the
relief
sought in terms of Sections 34 (3)(a) and (b) of the Trade Marks Act and
also
Section 11(3) (b) and (c) of the Companies Act.
5.6 Dealing with the issue of Trade Marks infringement, In Vermark (Pty) Ltd v
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BMW AG [2007] SCA 53 (RSA) paras 6-7, the SCA approved the view taken
by the House of Lords in R v Johnstone [2003] UKHL 28 (22 May 2003),
wherein Lord Nicholls stated:
“…the essence of a trade mark has always been that it is a badge of origin. It
indicates a trade source: a connection in the course of trade between the
goods and the proprietor of the mark. That is its function.
5.7 The fact that there is CM before INVESTECH in first respondent’s name
does not alter the similarity in the two companies’ names, especially
phonetically.
6. FINDINGS
6.1 I am persuaded that the applicant has made out a case that the first
respondent’s name does not comply with Sections 11(2) (a) (b) and (c) of the
Companies Act and Section 34 of the Trade Marks Act. I ts name is
confusingly
similar and falsely implies, or could reasonably mislead a person to believe,
incorrectly, that first respondent is part of or associated with the applicant.
6.2 In Rovex Ltd and another v Prima Toys (Pty) ltd 1981 (2) SA 447 (C)
(“Rovex”) it was stated as follows; ‘’…If a defendant uses an ordinary English
word or words, there is no doubt the public will be less likely to regard it as a
proprietary word and associate it with a similar word registered by the Plaintiff
than would be if both words were invented words which had no meaning
appropriate to the goods in question’’.
The dictum in Rovex is applicable in the instant case.
6.3 The application is granted the order as set out below.
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7 ORDER
7.1 An administrative order is made in terms of Section 160(3)(b)(ii) as follows:
(i) first respondent must change its name to one which does not consist of, or
incorporate the trade mark “INVESTECH” or any other mark which is
confusingly and/or deceptively similar to the applicant’s “INVESTEC” trade
mark as it is in contravention of Sections 11(2)(b)(iii) and (c)(i) of the Act.
(ii) The CIPC is authorised and directed to change the name of the first
respondent to “K2023/549046/07 Ltd” in the event of the first respondent
not complying with paragraph ( i) above within 6 0 days from the date of
receipt of this order.
(iii) The first respondent must file a notice of amendment of its Memorandum
of Incorporation with the CIPC 30 days after it has been served with this
Order.
(iv) The order must be served on the first respondent by the Tribunal’s
Recording Officer (Registrar)
(V ) There is no order as to costs as the matter was unopposed.
N. CAWE: Member of the Companies Tribunal