(WESTERN CAPE HIGH COURT, CAPE TOWN)

CASE NO: 7187/08
In the matter between:

and

AND

In the matter of a counter application between:

and

				JUDGMENT : 9 NOVEMBER 2009

TRAVERSO, DJP :

COMPANY NAME OBJECTION:

"No memorandum containing a name for a company to be incorporated shall be registered if in the opinion of the registrar the name is undesirable."

"In particular a name will be considered undesirable If -

1.1    it is identical or very similar to a name already registered.

1.5 words pertaining to a trade mark are contained in a name which will be used in regard to a business which relates to the class of goods or services in which the trade mark is registered while the Applicant has no proprietary rights in respect of such trade mark, nor the consent of the said proprietor to use such words in a name."

TRADE MARK:

SOUTH AFRICAN GOLF ASSOCIATION 
SA GOLF ASSOCIATION
SA GOLF ASSOCIATION GOLF ACADEMY 
SAGA SOUTH AFRICA

They are all in Class 41.

"34. Infringement of registered trade mark. -...
(2)   A registered trade mark is not infringed by -

(g)    the use of any identical or confusingly or deceptively similar trade mark which is registered:"

(12) a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons;
..........
(14) subject to the provisions of section 14, a mark which is identical to a registered trade mark belonging to a different proprietor or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in respect of which such trade mark is registered, would be likely to deceive or cause confusion, unless the proprietor of such trade mark consents to the registration of such mark;"

"Educational services in relation to golf; providing of golf training; golfing tuition; arranging and conducting of conferences, seminars and workshops; promotion and organisation of sporting events; services in this class in relation to the exploitation of sporting events; providing golf facilities; providing sports facilities; video, tape, film, television and radio production; entertainment services, organisation of competitions; publication of books and texts; consultancy; information and advisory services relating to the aforesaid; educational, management, entertainment, sporting and recreational services including services in relation to sports grounds, sports clubs, pleasure resorts, golf courses, golf driving ranges, golf tournaments, maintenance, organisation and upkeep of the aforegoing and all other services related to or connected with golf."

"education; providing of training; entertainment; sporting and cultural activities."

of:

"Teaching and instruction; entertainment; sporting activities; all of the aforesaid being concerned with or relating to the game of golf."

"In the infringement action the onus is on the plaintiff to show the probability or likelihood of deception or confusion. It is not incumbent upon the plaintiff to show that every person interested orconcerned (usually as customer) in the class of goods for which his trade mark has been registered would probably be deceived or confused. It is sufficient if the probabilities establish that a substantial number of such persons will be deceived or confused. The concept of deception or confusion is not limited to inducing in the minds of interested persons the erroneous belief or impression that the goods in relation to which the defendant's mark is used are the goods of the proprietor of the registered mark; ie the plaintiff, or that there is a material connection between the defendant's goods and the proprietor of the registered mark; it is enough for the plaintiff to show that a substantial number of persons will probably be confused as to the origin of the goods or the existence or non-existence of such connection.
The determination of these questions involves essentially a comparison between the mark used by the defendant and the registered mark and, having regard to the similarities and differences in the two marks, an assessment of the impact which the defendant's mark would make upon the average type of customer who would be likely to purchase the kind of goods to which the marks are applied. The notional customer must be conceived of as a person of average intelligence, having proper eyesight and buying with ordinary caution. The comparison must be made with reference to the sense, sound and appearance of the marks. The marks must be viewed as they would be encountered in the market place and against the background of relevant surrounding circumstances. The marks must not only be considered side by side, but also separately. It must be borne in mind that the ordinary purchaser may encounter goods, bearing the defendant's mark, with an imperfect recollection of the registered mark and due allowance must be made for this. If each of the marks contains a main or dominant feature or idea the likely impact made by this on the mind of the customer must be taken into account. As it has been put, marks are remembered rather by general impressions or by some significant or striking feature than by a photographic recollection of the whole. And finally considered must be given to the manner in which the marks are likely to be employed as, for example, the use of the name marks in conjunction with a generic description of the goods."

(a)  The order of the first respondent in terms of Section 45(2) of the Companies Act, 61 of 1973, directing the first applicant to change its name is set aside.
(b)   The second respondent is ordered to pay the costs of the application.

(c)   The   second   respondents   counter   application   is dismissed with costs.