INTELLECTUAL

Facts: The applicant produces and supplies chemical compounds of various applications and has done so since 1997. The applicant's sole director is Mr Overberg. The first respondent is Mr Nolte. He is a chemist of some considerable experience and he and Mr Overberg founded the applicant. The applicant's right to the relief which it seeks is founded on the contention that it developed and manufactured (and still manufactures) Pylene FOO (FOO) which is used to aid the drying of raisins and sultanas. It has supplied Pylene FOO to Safari Dried Fruit for some time. The applicant contends that the formulation of Pylene FOO is proprietary to it and is confidential. It claims that the formulation of Pylene FOO is known only to a handful of people and is of significant economic value to whomsoever is in possession thereof. Mr Nolte developed Pylene FOO whilst a director of the applicant. Mr Overberg enquired from Pepsico whether it intended to place any orders for Pylene FOO for the upcoming year. He was surprised to hear that Pepsico did not require Pylene FOO as it had found an alternative supplier in the form of the third respondent, Southern Oil (SOILL). Ms Ozviti confirmed that SOILL had recently added an FOO to its product offering and that it had sold its first consignment to Pepsico.

Application: On hearing of Chemtoll's involvement in the process and because he assumed that Chemtoll was using the applicant's formulation to produce an FOO for SOILL without the applicant's consent and in contravention of its non-disclosure agreement, Mr Overberg met with Mr Theunissen of Chemtoll. During that meeting Mr Overberg was told, for the first time, that Mr Nolte was involved in what Mr Overberg referred to as "the scheme" and that Mr Nolte was "an agent or consultant of some sort" to SOILL. The applicant seeks an interim interdict restraining the respondents from using its formulation for a fruit drying oil known as Pylene FOO.

Discussion: Mr Overberg concluded that SOILL was using the applicant's FOO formulation to produce its competing product and that it did so with the assistance of Mr Nolte and Baychem. The applicant relies on its claim to own the formulation of the FOO being produced by Chemtoll on behalf of SOILL for the relief sought by it against all the respondents. In relation to Mr Nolte, the applicant also relies on Mr Nolte's breach of his fiduciary duty (as a previous director of the applicant) not to use information confidential to the applicant for his own benefit. This duty remains with a director after his resignation and is breached if it involves the use of confidential information that is worthy of protection. While it is correct that SOILL has been in the process of developing an FDO since 2015 it was unable to do so effectively until it engaged the services of Mr Nolte and Baychem. What gave the applicant its competitive advantage enabling it to be the only local manufacturer of an FDO capable of competing with Victoria Chemicals for price and quality was its formulation for Pylene FDO. Mr Nolte admitted that he is one of only a handful of people who know the formulation of Pylene FDO. This admission is sufficient to establish, prima facie, that the applicant's formulation of Pylene FDO is confidential to the applicant.

Findings: Whilst Mr Nolte may have subjectively believed he owned the technology, prima facie the technology is owned by the applicant. The applicant has established, prima facie, that Mr Nolte disclosed the applicant's formulation of Pylene FOO to SOILL and that such conduct is a breach of his ongoing fiduciary duty not to disclose information confidential to the applicant and which is worthy of protection in the hands of the applicant. The applicant has established, prima facie, that it owns the formulation of Pylene FOO, and that the formulation thereof is confidential to it. Those rights of ownership and confidentiality are being infringed by Mr Nolte, Baychem and SOILL. The loss of turnover caused by the production of the SOILL FOO and the sale thereof by SOILL is very significant, amounting to almost half of the applicant's business. A small enterprise such as the applicant will not be able to sustain such losses for any period and without interim interdictory relief there is a very real prospect that it will close with devastating effects for all concerned including its employees.

Order: The interim interdict is granted.

MANCA AJ

Facts: The applicant (Solo Foods) has obtained registration of the mark VITA NUT in terms of a trade mark registration. One of the goods classified under Class 29 is peanut butter and it is this product which Solo Foods manufactures and in relation to which it uses the mark. Solo Foods’ rights in its registered trade mark date from 16 May 2018, which is when it filed its application for registration. The respondent (Kalinda Trading) also produces peanut butter and it has been making use of the mark VITA NUTS in relation to that product prior to 16 May 2018. Kalinda Trading does not dispute that the mark VITA NUTS is, at the very least, confusingly or deceptively similar to Solo Foods’ registered trademark. Solo Foods alleges that it has been operating a peanut butter manufacturing mill since 2003. Its primary business has been to supply peanut butter to underprivileged school children and mines. It also claims that its peanut butter products have been, and continue to be, sold to various outlets. It also alleges that it has been using the VITA NUT trade mark for its peanut butter and paste products since at least 2003 and that, over the years, it has built significant goodwill and reputation in the market for these products.

Application: In the primary application, Solo Foods, relying on its trade mark registration, seeks an interdict in terms of the Trade Marks Act 194 of 1993 to prevent Kalinda Trading and the remaining respondents from using the mark VITA NUTS, as well as ancillary relief. Kalinda Trading seeks to defeat the main application with a counter application for the cancellation of Solo Foods’ trade mark registration. Kalinda Trading alleges that it has made extensive use of the trade mark VITA NUTS, and has therefore acquired a reputation and goodwill associated with the mark. On this basis, it contends that the entry of Solo Foods’ VITA NUT mark on the register of trademarks was wrongly made by the Registrar of Trade Marks.

Discussion: On 27 November 2019, the applicant's trade mark application was advertised in the Patents Journal in terms of section 17 of the Trade Marks Act. Following the advertisement, interested persons had three months to oppose the registration. Somewhat surprisingly, notwithstanding their knowledge of Solo Foods’ application, the respondents did not oppose the registration. As there was no opposition at the end of the three months, the Registrar of Trade Marks granted registration on 12 May 2020. On 3 June 2020, Solo Foods became aware that its trade mark application had been successful. Kalinda Trading’s marks, used in connection with their peanut butter products, are at the very least confusingly similar to the applicant's registered trade mark VITA NUT. Kalinda Trading accepts that, applying the relevant tests, the marks VITA NUT and VITA NUTS used by the respective parties in this case, in connection with their peanut butter products, is reasonably likely to cause deception and confusion.

Findings: To establish the existence of the reputation claimed, it is necessary for Kalinda Trading to show that the mark and reputation is associated in the minds of the public with the business in question, being Kalinda Trading’s peanut butter products. Although the respondents have not provided the sales figures for the period being the effective date of the registration of Solo Foods’ trade mark, it was in all likelihood significantly less than the amount earned in the full year. Kalinda Trading had not developed a sufficient reputation with its VITA NUTS products within the relevant period. Its sales do not point to that conclusion at all. Another consideration is that the period during which Kalinda Trading’s VITA NUTS products were visible and available to consumers was brief, lasting no more than eight months. This is hardly adequate time to build up a significant brand reputation. Solo Foods has proven that it commenced using the mark many years before Kalinda Trading. Solo Foods established a reputation or goodwill associated with its use of the mark.

Order: The first and second respondents, in terms of section 34(1)(a) of the Trade Marks Act 194 of 1993, are interdicted and restrained from infringing trade mark VITA NUT in class 29 by using, in the course of trade, any mark, including the mark VITA NUTS, identical to, alternatively, deceptively or confusingly similar to, this registered trade mark in respect of goods for which the applicant’s trade mark is registered.

GOTZ AJ

Facts: The applicant is the proprietor of two registered POLO device trade marks. They are described as pictural devices of single polo players each astride a pony engaged in play. The respondent is the proprietor of the MARK ANTHONY word mark. The respondent applied for registration of its device, called "the racer and horse device". The device depicts a jockey sitting on a horse in full gallop. The article of clothing which informs the application is socks and thus the device when applied to this article of clothing is very small. The respondent's get-up includes the word MARK ANTHONY as well as the racer and horse device. The applicant's device trade marks are used on its goods and are used both alone or with the POLO word trade mark and the latter is also used alone.

Application: The applicant seeks to interdict the respondent from infringing its two trade marks and seeks further trade mark infringement relief. It bases its application on section 34(1)(a) and section 34(1)(c) of the Trade Marks Act 194 of 1993. The court is required to exercise a value judgment on the question of the likelihood of deception or confusion.

Discussion: The evidence adduced by the applicant as to its background, distinctiveness, goodwill and reputation informs its case that the POLO mark has earned, and still enjoys, an immense goodwill and reputation and that the POLO trade marks have become firmly established in South Africa for more than 40 years. The sale of the applicant's socks alone equates to almost R20,9 million for the period 2013 to 2022, and in 2021/2022 financial year to R2,8 million alone. The applicant says it has created a strong reputational link and association between it, its trade marks and its products and services. The respondent takes issue with this. It argues that most of the evidence that has been attached amounts to hearsay evidence, which is inadmissible and does not justify the conclusion that the applicant's device is well-known. The respondent offers no cogent evidence to demonstrate that the applicant's device and mark is not well-known in the market or that they have become distinctive in their use. The respondent's case is that one cannot claim simply that because the device depicts or incorporates a horse and rider feature that it is similar and therefore the objectives of section 34(1)(a) or section 34(1)(c) are achieved by that fact alone. This, it argues, will allow the applicant to enforce a monopoly over every depiction of a horse and/or horse and rider.

Findings: What lends credence to the applicant's case is the argument that there is confusion or deception in the market: in October 2022, Mr Guldenpfennig visited PK Outfitters in Fordsburg. He asked for polka dotted POLO socks. The sales assistant gave him polka dotted socks manufactured by the respondent and insisted that they were POLO socks. Given that the device marks are not enunciated, there is no aural comparison to be made to further remove any deception or confusion, thus the deception or confusion arise from the visual and conceptual differences between the applicant's and the respondent's devices. The parties are direct commercial competitors. Their goods compete in the market in the same class. The evidence of Mr Guldenpfennig cannot be either understated or ignored. Given what occurred, the point is that the respondent would significantly benefit in the consumer's association of its goods with the applicant's, given the distinctive character and repute of the applicant's marks and device. This association would therefore result in the loss or diminishment of advertising value and selling power of the applicant's marks and the resultant enhancement of the respondent's. 

Order: The application succeeds.

NEUKIRCHER J

Facts: The plaintiff is Technical Systems (TS) which manufactures conveyor-driven feed systems for poultry and other livestock. These consist principally of two products: poultry feed chain and a spiral wire product known as auger. The chain is used as a conveyor belt to transport feed to battery chickens in a trough. Christiaan Kurz (CK) was employed by the plaintiff as a plant engineer from 2001 to 2009, when he resigned, and he trades under Feed Chain Industries and is also the director of CQuiptech and was involved in the establishment of CGC industries (the defendants, with CK’s friend and business partner, Carl William Richter).

Claim: TS sues for damages and claims that the defendants are competing unlawfully with it and have wrongfully misappropriated confidential information and technological “know-how” belonging to it, pertaining to its set-up and process for the manufacturing of feed chain, as well as other trade secrets. It is alleged that they have infringed the copyright which the plaintiff enjoyed in the protected technical drawings of the production process and works of craftsmanship and that the design, set-up and material specifications of the manufacturing process which is utilized by the defendants in their production of feed chain is the same, or substantially the same, as that which is employed by the plaintiff. A total of 23 witnesses, which included several mechanical, process and design engineers, draughtsmen, tool-setters and toolmakers, testified: 16 for the plaintiff and 7 for the defendants.

Unlawful competition: In setting up a competing plant utilising the confidential information to replicate the plaintiff’s confidential processes the defendants acted unlawfully. By the time CK was taken into the plaintiff’s employ it was already producing feed chain utilising the processes it had developed, and these were simply refined during the years that he worked for the plaintiff. As for CK’s purported reliance on the constitutional rights set out in sections 10 (dignity) and 22 (freedom of trade) of the Constitution, neither of these sections grant a licence to an ex-employee to steal or misappropriate valuable confidential information and trade secrets of his employer (on which the heart of his enterprise has been built over many years), and a right to use them.

Copyright: In terms of section 7 of the Copyright Act 98 of 1978, direct infringement occurs when a protected work is reproduced “in any manner or form”. The central issue that requires determination is whether the defendants have wrongfully “reproduced or adapted” the plaintiff’s protected works of craftmanship and drawings. The plaintiff has succeeded, overwhelmingly, in showing that the defendants copied the essential features of the plaintiff’s parts and components, added certain non-material aspects to them and removed or altered others, to produce theirs. In short, they reproduced every material aspect of the works in which the plaintiff enjoyed copyright, and that accounts for the substantial similarity in the parties’ works.

Order: The defendants are interdicted and restrained from infringing the plaintiff’s copyright in the works (including the drawings) listed on annex A. The defendants are interdicted from infringing the plaintiff’s confidential information or trade secrets in those items listed on annex B. The sheriff is directed and authorised to attach the listed items, or components of these items, of the defendants’ feed chain manufacturing line. An enquiry shall be held to investigate and determine the nature and quantum of the damages suffered by the plaintiff as a result of the infringement of its copyright, confidential information and trade secrets, including the amount of punitive damages (if any) which may be payable by the defendants.

SHER J

Facts: Mrs Greyvenstein, an investigator employed at Summit, purchased certain goods from the applicant (My-China Discount Store). This was after Summit had received instructions to conduct a test purchase from Mr Saunders, a senior associate at Eversheds. The test purchase was bagged and sealed at Summit and handed over to Eversheds. Mr Saunders averred that in his assessment the test purchase were counterfeit goods in terms of the Counterfeit Goods Act 37 of 1997. He further stated that he had received brand identification training from the Lego Group. The respondents complained against the applicant to the Directorate of Priority Crime Investigations Serious Commercial Crime Unit. The section 3(1) complaint comprised of the affidavits of Mr Saunders (complaint affidavit), Mr Oumar’s and Mrs Greyvenstein’s. Lego urged the respondents to apply for a search and seizure warrant authorizing the search of the applicant’s premises and the seizure of counterfeit goods bearing Lego’s purported intellectual property rights. On the strength of these affidavits, the third respondent, Januarie, applied for a search and seizure warrant in terms of section 6(1) of the Counterfeit Goods Act.

Application: Following an ex parte application before the magistrate, a search and seizure warrant was authorized in terms of section 6(1) of the Counterfeit Goods Act. With more than 9,500 items seized from its premises, the applicant brings an application to set aside the warrant and prays for an order authorizing the return of the goods seized from its premises.

Discussion: The powers of search and seizure are only available to the officer following an authorisation by a judge of the High Court or a magistrate who has jurisdiction in the applicable area in terms of section 6(1) of the Counterfeit Goods Act. Thereafter, the provisions of section 7(2)(a) of the Counterfeit Goods Act read with section 9(1)(a) must be complied with. In his affidavit, Januarie wrote that he received an affidavit of complaint deposed to by Saunders in terms of section 3. Importantly, he wrote that “having considered the averments in the complaint made under oath” he was reasonably satisfied that Saunders was prima facie entitled to lay a complaint in terms of section 3. In deciding whether Januarie, prima facie, made out a case which entitled the authorization of the search and seizure warrant, the magistrate of necessity, must have read the three affidavits, namely the complaint affidavit by Saunders, Greyvenstein’s affidavit and Oumar’s affidavit. It is bizarre that Januarie sought a search and seizure warrant for copyrights and trade marks, which were never mentioned in the complaint affidavit. Saunders never mentioned those trademarks in the complaint affidavit.

Findings: Januarie sought a search and seizure warrant for registered copyrights. Saunders’ complaint affidavit made no mention of those registered copyrights. Besides the questionable adjective “registered” copyright, it is unknown from where he got these trade marks and registered copyrights. What is worse is that the magistrate authorized a warrant for the search and seizure of these trademarks and registered copyrights. It is mind-boggling from where the respondents got these trade marks and registered copyright mentioned under annexures “A” and “B”. Inevitably, one asks oneself a rhetorical question whether the magistrate took the trouble to read Saunders’ complaint affidavit or simply followed what Januarie told her. Despite the failure to adhere to the test, the magistrate authorized the warrant. The totality of evidence leads to the ineluctable finding that the magistrate failed to apply her mind or exercise her discretion properly or at all when authorizing the search and seizure warrant. Even on the lowest of thresholds, let alone on prima facie basis, the facts do not pass muster to justify the authorization of a search and seizure warrant.

Order: The warrant is set aside. The respondents are ordered to return the goods they seized to the applicant.

MOTHA J

Facts: The applicant, Bayer, is the proprietor of the registered trade mark XARELTO registered in Class 5 of the trade marks register. This trademark was applied for by the applicant in 2004 and thereupon registered with the Registrar of Trade Marks in 2008 in respect of pharmaceutical preparations and substances, diagnostic preparations and reagents for medical use and which trade mark remains of full force and effect. The respondent, Austel Pharmaceuticals, is the proprietor of trade mark registration REZALTO also registered in Class 5 of the register. That application for registration was filed in 2018 and registered in 2020 in respect of pharmaceuticals, medical and veterinary preparations, and sanitary preparations for medical purposes, among other similar pharmaceuticals. The applicant and the respondent are competitors in South Africa.

Application: This application concerns a trademark infringement and expungement application and wherein the infringement is based on section 34(1)(a) of the Trade Marks Act 194 of 1993, and the expungement or cancellation on sections (10), (12) and (14) of the Act. Reference is also made to section 24 of the Act in contending with the general power to rectify entries appearing in the register by the Registrar of Trade Marks.

Discussion: The respondent is using the trademark REZALTO in marketing and selling a generic version of the applicant’s XARELTO anti-coagulant medication possessing the ingredient rivaroxaban and which the respondent advertises as breaking down clots. REZALTO is the generic equivalent of XARELTO prescription anti-coagulant medication available in South Africa. XARELTO and REZALTO are interchangeable and substitutable with one another and commercially as products are in direct competition with each other. A side-by-side comparison of XARELTO and REZALTO is apt. Both share similar phonetic elements. The trade marks are similar to the extent of being confusingly similar. The trade marks are also similar visually. With the marks being plainly similar visually and phonetically, consumers for their part rely on a holistic comparison of respective trade marks not in the process disseminating or segmenting trade mark words or names. In so doing, there is clearly scope to confuse the XARELTO and REZALTO trade marks and related products marketed and sold under the trademarks.

Findings: The respondent has confirmed that the goods covered, marketed and sold under the REZALTO trademark are for all intents and purposes identical to those covered by the applicant’s registration. The applicant’s XARELTO trademark bears reference to reagents for medical use while that of the respondent incorporates food for babies, dental wax and herbicides. All the above goods are capable of being purchased off the shelf and by ordinary consumers who upon assessment of such goods and related trade mark names may become confused or be deceived thereby. There can be little doubt that consumers are likely to be confused or deceived in believing that products sold under the REZALTO trademark are the same or connected with that sold under XARELTO trademark. In these circumstances, the REZALTO trade mark ought never to have been registered and stands to be removed from the trade marks register and in terms of section 10(14) of the Trade Marks Act.

Order: The trade mark registration REZALTO in Class 5 in the name of the respondent is cancelled and the registrar is directed to remove it from the register of trade marks. The respondent is interdicted from infringing rights of the applicant and its trade mark registration.

MEADEN AJ

Facts and issue: The applicant in the main application, SAMA, seeks final interdicts against the respondent in the main application, SAMATU, based on the common law cause of action passing-off and on the statutory infringement of its registered trademarks in terms of the Trade Marks Act 194 of 1993, together with ancillary relief.

Discussion: SAMA is the registered proprietor, in South Africa, of the trademarks SAMA in class 42, and SAMA logo in classes 9, 16 and 42. SAMA argued that SAMATU infringed its registered rights by using the name South African Medical Association Trade Union, the mark SAMATU and the SAMATU logo, as contemplated by Section 34(1)(a) of the Trademarks Act. SAMATU has filed three applications for the trade mark and its logo in class 25. These applications have made on the basis of honest concurrent use or other special circumstances as contemplated by section 14 of the Trade Marks Act. SAMATU argued that once these trade marks proceed to registration, it might have an absolute defence against trade mark infringement and passing-off proceedings. It, however, falls solely within the jurisdiction of the Registrar of Trade Marks to assess whether or not SAMATU is entitled to the registration of such marks. SAMATU argued that there exist exceptional circumstances that warrant a stay of the proceedings and that the stay will be in the interest of justice, in that the outcome of the applications before the Registrar of Trade Marks will impact both parties’ rights in the main applications.

Findings: It would be non sensical for SAMATU to be interdicted at this stage to use its trade marks, only for it to obtain registration at a later stage and be permitted to use the exact same marks. Considering the history between the parties and principles of equity, SAMATU has demonstrated that exceptional circumstances exist that warrant a stay of the proceedings and that it will be in the interest of justice to do so.

Order: The application proceedings in the main applications are stayed pending the registration or rejection of the trade mark applications filed by SAMATU in terms of section 14 of the Trade Marks Act, by the Registrar of Trade Marks.

Facts: Mr Osborne-Young, the owner of what was then Mercury Fittings CC and now Mercury, and Mr Humphries, the owner of Doorware, have had a long history in the door handle business. After establishing Mercury, the deceased approached Dorma to sell it a range of door handles. Dorma ceased ordering door handles from Mercury. This placed the deceased in a precarious financial position since Dorma was his main client. The deceased and Mr Humphries decided to join forces in sourcing a range of stainless steel and ironmongery goods to be imported and sold in South Africa. The “QS” Brand was established and constituted a joint venture (JV) between Mercury and Doorware alternatively the deceased and Mr Humphries, in terms of which they would import and distribute their own range of door handles and products under their own brand which they invented. In terms of the geographic split, they distributed the QS products in their agreed regions of the country. In late 2022/early 2023, Doorware established premises in and began trading from Cape Town. Doorware contravened the geographic split.

Application: The applicant (Mercury) alleges that the respondent (Doormax) is currently using the QS brand without the consent of Mercury or Ms Osborne-Young. Doormax’s basis for doing so is that it does not require their consent. Doormax has also refused to give an undertaking to cease and desist from doing so and the basis for such refusal is that Doormax should be entitled to trade as it deems fit and that the applicants are attempting to enforce a prohibited agreement in an obvious attempt to quell legitimate competition in the marketplace. This is an application for final interdictory relief, alternatively interim interdictory relief against Doormax.

Discussion: The applicants contend that Doormax, in collusion with Doorware began to distribute QS products to Mercury’s customers in Cape Town and the Western Cape in breach of the interim interdict granted by the South Gauteng Division, Johannesburg and that contempt of court proceedings have been instituted. It is common cause that Doormax is trading in QS products, but Doormax denies that it is doing so unlawfully. Doormax has set out no defence for why it is unlawfully competing with Mercury in respect of the QS brand. Doormax’s conduct results in a wrongful interference with Mercury’s goodwill and its business and therefore amounts to unlawful competition. The applicants have established that the QS Brand is a common law trademark which resulted in goodwill to Mercury and Doorware and which goodwill is a protected right. The breach of the applicant’s rights is sufficient to find a basis for the final interdictory relief sought. It is undisputed that Doormax is currently using the QS brand without the consent of Mercury or Ms Osborne-Young, even though Doormax’s basis for doing so is that it does not require their consent.

Findings: The applicants have established that they have a protectable interest in the form of the QS brand and the goodwill which arises therefrom. This goodwill has been wrongfully interfered with by Doormax and such wrongful interference amounts to unlawful competition. The breach of the applicants’ rights is sufficient to find a basis for the final interdictory relief sought. There is a continuing threat that Doormax will persist with its offending conduct in the absence of an interdict. The applicants have suffered and will continue to suffer harm. Doormax will be able to continue to trade by selling other ranges of door handles and the prejudice against Doormax is outweighed by the prejudice to the applicants. There is a wrongful act of interference by way of unlawful competition being perpetrated by Doormax and applicants have therefore established a clear right. Such wrongful act has infringed the business goodwill and the protected right thereto, acquired by Mercury through the QS brand and that this infringement continues. No other suitable remedy is available to the applicants. Doormax’s reliance on the JV agreement for its refusal to cease and desist from importing and distributing QS products is misplaced and does not offer a valid defence.

Order: Doormax is interdicted and restrained from importing, distributing, offering to sell, making available to sell, or supplying or otherwise dealing with, whether directly or indirectly, any product in the QS product range or any product bearing the name or branding of the QS product range, without the written consent of the first, or alternatively, second applicant.

MAHOMED AJ

Facts: Emisha Software (applicant) paid Servsol Software (respondent) for professional services rendered upon its instructions in the development and management of the Insurance Guard System (IGS program) for a fee of R6 million rand over a seven-year period. The applicant claims that the program is exclusively owned by it. The program hosts insurance products and serves as a “Credit Guard” for the consolidated credit life insurance products that is made available to debt counsellors for their clients. The applicant has since discovered that new activity and clients are being loaded in the IGS program without its consent. The applicant has also discovered that it lost access to the IGS program in June 2023 whilst still paying the respondent approximately R60,000 per month.

Application: For an interdict, alternatively interim relief, regarding the infringement of a copyright of the computer program, for which the applicant alleges it has exclusive ownership. The applicant sought an order for the delivery of the IGS program, an order for an enquiry on the damages suffered or reasonable royalty to which it is entitled, because of the unlawful infringement of the copyright, and an order that an expert be appointed to conduct an audit on the respondent’s systems to ensure that it no longer stored or transferred program to other devices. The respondent vehemently denied that the applicant has exclusive ownership of the IGS program and contends that the application is based on a lie and is disputed by the facts, because the respondent is the co-owner of the program.

Discussion: The applicant acknowledged that it was not the company that writes the coding but exercised the control over the making of the computer program. Thus, it utilised the services of the respondent to do the actual coding on its behalf and the work was always done at the instructions and under the control of the applicant. The overall function of the IGS program was done and decided at the instruction of the applicant. It is critical to acknowledge the distinction on the development of the computer program which may be based on an idea that is pitched by, as in this case, the applicant as opposed to the developer (respondent) who designed the program and not necessarily becoming the owner. In this instance, this may relate to a workplace environment where a person is employed to perform the associated task as per the scope of his employment and cannot claim ownership of the program on resignation or leaving his original work. In this regard, the applicant is a private company that was initially incorporated as an entity to develop software and computer program solutions for insurance brokers which would enable them to host their products.

Findings: The respondent is a close corporation that is a software development company. It is in this context, of the pitching of an idea and the other party executing it on behalf of the “pitcher”, that is critical for this court to determine the substance of ownership within the framework of the Copyright Act 98 of 1978. This case is grounded on the intersectionality of the principle of “originality” and “ownership”. If there was no original conception of the idea for a computer program, the second leg of ownership could not have followed. The respondent has not satisfied the requirements of co-ownership in that there is no legal basis upon which co-ownership could be claimed. The originality of the program is attributable to the applicant as its first author. The conduct of the respondent, by its own admission, and ability to access the IGS program and other various platforms is indicative of what appears to be reflective of dominance over the program use by virtue of having developed it. As to the audit relief, the court is not satisfied that this is justified. An interdict is the immediate stoppage of any interference, which means that an audit would be a fruitless exercise because even if the IGS program is stored elsewhere, the first respondent will not be able to use it.

Order: The application for an interdict is granted.

NTLAMA-MAKHANYA AJ

Facts: The Lee Riders Motorcycle Club (applicant) is a voluntary association which was established in 1984 and which aims to advance the interests of its members, all of whom are motor-cycle enthusiasts. The applicant alleges that it is the common law proprietor of the "Lee Riders" word mark and the Lee Riders device mark in class 41, in respect of sporting and cultural activities. The applicant (also referred to as "the club") says that it has used the word mark widely since 1984, and the device mark since 2000, when it was modernized from its previous version. Mr Jacobs (first respondent) is an erstwhile member of the applicant, having resigned in 2015, together with a number of other members. He filed a trade mark application in respect of the Lee Riders logo in 2015 and applied to register the trade mark. In 2019 the device mark was accepted for purposes of proceeding to registration and was advertised for purposes of opposition.

Application: The applicant seeks an order granting an extension of time to oppose the first respondent's trade mark application. It also seeks an order that the Registrar be directed to refuse the first respondent's trade mark application, alternatively, that the Registrar be directed to withdraw the acceptance of the trade mark application in terms of section 29(1) of the Trade Marks Act 194 of 1993, further alternatively, that the Registrar be directed to cancel the trade mark application in terms of section 24(1) of the Act.

Discussion: The applicant has used the word mark "Lee Riders" since inception and has used the device mark since 2000 when it was modernized. The first respondent does not deny that the device mark that he seeks to register is to all intents and purposes identical to the device mark that the applicant has used since 2000. The first respondent does not deny that the applicant has established a reputation in respect of the trade mark that he now seeks to register. There is no real attack to the proposition that the applicant has established a reputation in respect of the word and device marks, that its name and logo are identified with it, and that it has been so for a number of years. The first respondent's case is that Lee Riders NPC, a non-profit company that was established in 2015, is the proprietor of the marks. The first respondent contends that the members who left the club are the proprietors of the trade marks. That cannot be correct. There is no dispute that the applicant still exists as a voluntary association. The association has separate legal standing from its members. It has at all times been the proprietor of the trade marks, and there can be no basis in law whereby the disgruntled members who, having left the club, can claim proprietorship in the trade marks.

Findings: The first respondent personally has no claim to the trade marks. The application for the registration of the trade marks in his name is thus struck by the provisions of section 10(3) of the Act, as being marks in respect of which the first respondent has no bona fide claim to proprietorship. That is really the end of the case. However, even if there were some way by which the NPC were able to obtain registration of the trade marks through the first respondent (which there is not), section 10(3) is fatal to its application for registration. The NPC is an entity separate from its members, and it is also a different entity to the applicant. It has no claim to proprietorship in the trade marks. The applicant's reliance on section 10(12) and 10(13) of the Act is correct. It provides that a trade mark that is inherently deceptive, or where its use may be likely to deceive or cause confusion, may not be registered. There can be no doubt that the use of the same name and logo by two different clubs in the same recreational field would deceive and cause confusion. Also, the applicant's reliance on section 10(16) is correct. It prohibits the registration of a mark that is the subject of an earlier application, if the registration of that mark is contrary to the existing rights of a person making a later application for that mark.

Order: The applicant's extension application is granted. The Registrar of Trade Marks is directed to refuse the trade mark application Lee Riders Logo in class 41 in the name of Nigel Jacobs in terms of section 21, read with sections 10(3), 10(4), 10(12), 10(13) and 10(16) of the Trade Marks Act. The respondent shall pay the disbursements incurred by the applicant's legal representatives in respect of the extension application and this application.

SWANEPOEL J

Facts and issue: This application initially explicitly concerned alleged design infringements. Most of these alleged infringement issues have now been settled between the applicant and the first respondent. The issue that remains for my determination is an amendment application at the instance of the applicant. The second respondent opposes this amendment application.

Discussion: The parties accept that the applicant owns the sixteen registered designs. The reason for the amendment application was that the first respondent heavily criticized the applicant in the now-settled proceedings. This criticism was that the designs should never have been registered since they formed part of the ‘state of the art’ at their registration. One of the core complaints by the first respondent was the alleged disclosure of the design articles by the applicant at a public exhibition. Because the first respondent initially piloted this state-of-the-art argument, the applicant applied to amend its design registration certificates to include a release date. Thus, the amendments only relate to a release date. The proposed amendments leave the design unaltered. The applicant would have been entitled to the inclusion of a release date. Further, the interests of third parties affected by subsequent registration would also be protected. Most significantly, no third parties have raised any objections after the publication of the intended amendments. The opposition raised by the second respondent is directed to try to make their prior conduct lawful. Any application for the revocation of the designs is absent from these proceedings. None of the grounds of opposition raised by the second respondent (or even the first respondent seeking to impugn the novelty of the designs) provide a tenable basis to conclude for the invalidity of the designs. Thus, the amendments should be allowed. Also, the effect of the amendments will support the position that the amendments may be granted. Thus, the opposition to the amendments must fail.

Findings and order: The applicant is granted leave to amend (by way of formal recordings), to record release dates for the applicant’s registered design numbers. Following section 26(1)(b) of the Designs Act, Act 38 of 1997, the release dates for the amendments to the registered designs are granted to record them as 27 April 2016.

Facts: The African National Congress (ANC) alleges that the uMkhonto weSizwe Party (MKP) has, without authorisation from the ANC as the proprietor of the registered trade mark No 2014/22089, used the identical mark or a mark so similar as to likely cause confusion or deception in the mind of the average South African voter to the extent that she or he will not be able to distinguish between the ANC and the MKP at the ballot box, especially in light of the imminent national elections. In addition, the ANC contends that the MKP has, through the use of the name uMkhonto weSizwe and of its registered mark, accompanied by oral misrepresentations by MKP leaders, engaged in conduct amounting to passing off under the common law. The contention is that millions of voters will know that the name uMkhonto weSizwe and its logo are synonymous with the history of the ANC, and in so doing, they are likely to cast a vote for the MKP while believing that they are in fact voting for the ANC.

Application: An urgent application brought by the ANC against MKP in which the ANC seeks a final interdict on the grounds that the MKP infringed its trade mark, registered pursuant to the provisions of the Trade Marks Act 194 of 1993. The grounds of infringement relied upon by the ANC are located in section 34(1)(a) and (c) of the Trade Marks Act. The MKP contends that the application is one which is disguised as falling under the ambit of trade mark and intellectual property, when in truth it falls squarely within the heartland of political rights and election law.

Election matters and urgency: This court is not the forum to settle a dispute where there are competing historical accounts of events which took place almost 60 years ago, as to who may rightfully lay claim to the name uMkhonto weSizwe, excluding for the moment the debate on the proprietorship of the registered trade name. An important facet of the litigation before this court is the litigation initiated by the ANC in the Electoral Court, in which it sought to set aside the decision of the IEC and its Chief Electoral Officer to register the MKP as a political party on 7 September 2023. The assertions for the ANC directly implicate rights under section 19 of the Constitution (political rights). Matters concerning elections should ordinarily be brought at the earliest available opportunity because of their potential impact on the elections. The explanation tendered by the ANC for launching the urgent application falters at every level when held up against the standard set out by the Constitutional Court. In the exercise of the court’s discretion, the application would not be entertained, due to the lack of urgency.

Jurisdiction: The ANC’s description of the purpose of their application and the disputes that have arisen leaves no uncertainty that it pertains to elections and political rights. Having elected to challenge the registration of the MKP in terms of the mechanisms provided for in the Electoral Commission Act 51 of 1996, and having lost such appeal on the basis that it failed to comply with section 15(4B) of that Act, it was not open to the ANC to change lanes and institute another application in a different forum, essentially seeking the same relief predicated on the same grounds advanced before the IEC. The relief which the ANC seeks under the rubric of trade mark infringement, when considered in its context, falls par excellence into the sphere of “electoral matter” and political rights through the wider prism of the Constitution. The ANC’s right of recourse was an appeal or review to the Electoral Court to challenge the dismissal of its appeal lodged on 20 September 2023. The ANC chose the wrong forum to assert it rights. This court has no jurisdiction.

Locus standi and merits: Any proprietary interest that the ANC had in the warrior mark could only have been perfected by assignment on 23 September 2023. By that date, the MKP was registered as a political party and had acquired a vested interest in certain political rights (including the right to campaign under a particular name (uMkhonto weSizwe); to use an abbreviation (MK); and to use the mark of a warrior bearing a spear and shield). Our history tells us that despite our relatively short democracy, the South African public is finely attuned to the political rhetoric by various parties, particularly in light of the long struggle in this country to achieve the freedoms protected in section 19 of the Bill of Rights. The position of the average voter should not be compared to that of a consumer who may be misled when deciding whether to purchase a particular brand of coffee or teabags at the local supermarket, or a pair of athletic shoes at a sports store. There can be no confusion that will confront a voter in the sanctity of the voting booth, when confronted with the symbols of the ANC and the MKP. It has not been established that the marks resemble each other so closely that deception or confusion among voters is likely to arise. The ANC failed to establish a clear right for final relief, either to the name or to the use of its registered mark. The ANC had an alternate remedy of approaching the Electoral Court to undo the registration of the MKP on the grounds it advanced in this court. It could have achieved substantial redress in that court.

Order: The application is dismissed with costs.

CHETTY J