Automated Summary
Key Facts
LEGO JURIS A/S applied for an order under section 160 of the Companies Act 2008 to compel LEGO TRADING ENTERPRISE (PTY) LTD to change its name due to confusion with LEGO trademarks. The Respondent's name was registered in 2018 after the Applicant's trademarks (since 1960) and incorporates the word 'LEGO'. The Companies Tribunal determined the names are confusingly similar, likely misleading the public into associating the Respondent with the Applicant. The order requires the Respondent to change its name within 60 days or face an interim name assignment by CIPC.
Issues
- Whether the Companies Tribunal should direct the Respondent to change its name under Section 160 of the Companies Act due to the name's similarity to LEGO trademarks, including potential administrative orders for non-compliance.
- Whether the Applicant is entitled to remedies under Section 160 of the Companies Act, including directing the Commissioner of Companies to apply an interim name if the Respondent fails to comply with the renaming order.
- Whether the Respondent's company name, LEGO TRADING ENTERPRISE, is confusingly similar to the Applicant's registered LEGO trademarks under Section 11 of the Companies Act, potentially misleading the public into believing an association exists.
Holdings
- The Respondent is directed to change its name to one that does not incorporate the word 'LEGO' or trademarks and file an amendment to its Memorandum of Incorporation within 60 days.
- The court determined that the Respondent's name, LEGO TRADING ENTERPRISE, is confusingly similar to the Applicant's LEGO trademarks, leading to potential public confusion.
- If the Respondent fails to comply, the Commissioner of Companies will record its registered number followed by '(Pty) Ltd' as its interim name on the company register.
- The Respondent is exempted from paying the prescribed fee for filing the name amendment.
Remedies
- The Respondent is directed to change its name to one which does not incorporate the word LEGO and is not confusingly or deceptively similar to the Applicant's LEGO trademarks.
- The Respondent is to file a notice of an amendment of its Memorandum of Incorporation within 60 days of receipt of this order to change its name as directed.
- If the Respondent fails to comply with the name change within 60 days, the Commissioner of Companies is directed to record the Respondent's registered number followed by (Pty) Ltd as its interim name on the company register.
- The Respondent is hereby exempted from the requirement to pay the prescribed fee for filing the notice of amendment contemplated in this paragraph.
- No order as to costs.
Legal Principles
The court applied Section 11 of the Companies Act, which prohibits company names from being confusingly similar to registered trademarks. The decision relied on the principle that a company name must not falsely imply association with another entity's trademarks, particularly when the dominant feature of the name is the trademark (e.g., LEGO).
Precedent Name
- 1948 Court Judgment
- 2000 Unreported Judgment (Kentron vs. Kentronics)
- 2001 Court Judgment
Cited Statute
Companies Act 71 of 2008
Judge Name
Lucia Glass
Passage Text
- The Respondent is directed to change its name to one which does not incorporate the word LEGO and is not confusingly and or deceptively similar to Applicant's LEGO trademarks.
- Members of the public will be confused or deceived into believing that the business of the Applicant is linked to, or, associated with that of the Respondent's trademarks.
- The Applicant's trademarks, LEGO, is fully incorporated in the name of the Respondent's name, LEGO TRADING ENTERPRISE. If the Applicant's trademarks and the Respondent's name are compared, there is no doubt in my mind that they are confusingly similar as they both have the word LEGO and there will be confusion if the word LEGO to be used by the Respondent, in a normal and fair manner, in the ordinary course of business.