Automated Summary
Key Facts
AMKA PRODUCTS (Pty) Ltd filed an application in December 2017 against AMKA PANEL and AMKA PAINT, seeking a court order to change their names due to confusion with the Applicant's 'AMKA' trademark. The Tribunal, in a 25 April 2018 decision, ruled that the Respondents' names are confusingly similar and in violation of the Companies Act sections 11(2)(b)(iii) and (c)(i). The order mandates name changes within 30 days, with CIPC enforcing the change if not complied.
Issues
- Whether the use of 'AMKA' in the names of the First and Second Respondents is confusingly similar to the Applicant's registered trademark 'AMKA' under Section 11(2)(b)(iii) of the Companies Act.
- Whether the names 'AMKA PANEL' and 'AMKA PAINT' falsely imply or suggest that the Respondents are associated with the Applicant under Section 11(2)(c)(i) of the Companies Act.
Holdings
- The Tribunal granted the Applicant's application and ordered the First and Second Respondents to change their names to avoid incorporating the 'AMKA' trademark. They must file an amended Memorandum of Incorporation with CIPC within 30 court days, and CIPC is directed to substitute the registration number if non-compliance occurs.
- The Companies Tribunal found that the names 'AMKA PANEL' and 'AMKA PAINT' of the First and Second Respondents are in contravention of sections 11(2)(b)(iii) and (c)(i) of the Companies Act 71 of 2008. The Tribunal determined that the use of 'AMKA' in the Respondents' names is confusingly similar to the Applicant's well-known trademark and falsely implies an association with the Applicant.
Remedies
- The court directed the First and Second Respondents to change their company names to ones that do not incorporate or are confusingly and/or deceptively similar to the Applicant's trademark 'AMKA'.
- In the event of non-compliance within 30 days, CIPC is directed to remove the First and Second Respondents' names and substitute them with their registration numbers on the CIPC company register.
- The First and Second Respondents are required to file a Notice of amendment of their Memorandums of Incorporation with CIPC within 30 court days from the date of the order and must be exempted from payment of the prescribed filing fee.
Legal Principles
The court applied sections 11(2)(b)(iii) and (c)(i) of the Companies Act, which prohibit company names from being confusingly similar to registered trademarks or falsely implying association with another entity. The decision emphasized that the use of 'AMKA' in the respondents' names, without distinguishing elements, created a likelihood of public confusion and misrepresentation, violating these provisions. The tribunal also referenced principles from trade mark law, including the requirement for names to avoid infringing well-known marks as defined under the Trade Marks Act 194 of 1993.
Precedent Name
- Adidas AG & another v Pepkor Retail Limited
- Capital Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc. and Others
Cited Statute
- Companies Act 71 of 2008
- Business Names Act 1960 (Act No. 27 of 1960)
- Trade Marks Act No. 194 of 1993
- Merchandise Marks Act 1941 (Act No. 17 of 1941)
Judge Name
Khatija Tootla
Passage Text
- The name of the First and Second Respondent is therefore confusingly similar to the name or trademark of the Applicant, which is 'AMKA'. As a matter of fact the name of the First and Second Respondent is clearly confusingly similar to the trademark of the Applicant, and the Respondent is therefore in contravention of section 11(2)(b)(iii) of the Act.
- The Applicant has clearly demonstrated in its papers that it had substantively and significantly used the 'AMKA' trademark across Africa and the world and more particularly in the Republic of South Africa.
- The AMKA word mentioned in the First and Second Respondent's name is 'confusingly similar to' the registered trademarks of AMKA as listed above, where it would reasonably mislead a person to believe incorrectly, that the First and Second Respondent is part of, or associated with, the Applicant.