IN THE HIGH COURT OF SOUTH AFRICA
GAUTENG DIVISION, PRETORIA
CASE NO: 42160/21
In the matter between:
FIRSTRAND LIMITED First Applicant
FIRSTRAND BANK LIMITED Second Applicant
and
NATIONAL BANK OF ABU DHABI PJSC (PTY) LTD Respondent
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JUDGMENT
___________________________________________________________________
MBONGWE J:
INTRODUCTION
[1] This application has been brought in opposition to the registration of two trademarks sought by the respondent in terms of section 21 of the Trade Marks Act, 194 of 1993 (‘’the Act’’). The opposition was initially filed with the Registrar of Trade Marks who subsequently transferred the matter to the High Court in terms of the provisions of section 59(2) of the Act which read thus:
“59(2) Where proceedings in terms of section 21, 24, 26, 27 or 38(8) are pending before the Registrar, the Registrar may in his discretion refer the proceedings to the court, and shall refer the proceedings to the court on written application of all the parties to such proceedings.”
THE PARTIES
[2] The first applicant is FirstRand Limited, a South African public company incorporated and registered as such in terms of the company laws of South Africa with its registered address at 4 Merchant Place, corner Rivonia Road and Fredman Drive, Sandton, Gauteng, South Africa.
[3] The second applicant is FirstRand Bank Limited, a South African public company incorporated and registered as such in terms of the company laws of South Africa with its registered address at 4 Merchant Place, corner Rivonia Road and Fredman Drive, Sandton, Gauteng, South Africa.
[4] The first applicant is the holding company of FIRSTRAND BANK LIMITED, the second applicant.
[5] The respondent is the National Bank of Abu Dhabi PJSC, incorporated in the United Arab Emirates, Khalifa Street, National Bank of Abu Dhabi Building, United Arab Emirates.
FACTUAL MATRIX
[6] The first applicant is the proprietor in South Africa of trade mark numbers 1998/05116 under class 36. The second applicant is the proprietor of in South Africa of trade mark numbers 1987/00285, 1990/02746, 1998/02989, 2013/06648 and 2013/17495. The said marks are registered under class 36 and have been extensively in use since 1838 by the by the applicant in relation to insurance, assurance services, investments, real estate, bookkeeping, leasing, business, financial activities and other services.
[7] On 26 April 2017 the respondent submitted two trade mark registration applications to the Registrar of Trade Marks under application Numbers 2017/11542 and 2017/543 seeking the registrations of the devices FIRST ABU DHABI BANK and GROW STRONGER FIRST ABU DHABI BANK, respectively, in class 36 for:
“Banking affairs and services, internet banking services, tele-banking services, mobile banking services, banking, home banking services, banking information services, business banking information, financial liquidation services, capital investment services, cheque verification, financial clearing houses, financial consultancy, credit bureaux, credit cards services, issuance of credit cards, debit card services, deposit of valuables, financial evaluation (insurance, banking, real estate), exchanging money, financial information, financial management, financial sponsorship, fund investment, electronic fund transfer, guarantees, health insurance, underwriting, hire- purchase financing, issue of tokens of value, issuing of travellers cheques, lease purchase financing, lending against security, life insurance underwriting, financing loans, safe deposit services, saving banks, Sukuk Sharia compliant,” (Founding Affidavit para 29.2.2)
[8] The applicants allege to have become aware of these applications in July 2018 and, on 7 October 2018 their attorneys sent a letter to the respondent’s attorneys demanding that they withdraw the trade mark registration applications and cease all use of the trade marks (para 27.1 of the founding affidavit). On 29 August 2018 the applicants’ attorneys received an email from the respondent’s attorneys furnishing the details of the respondent’s attorneys in Abu Dhabi instructed in the respondent’s trade mark registration applications. On the same date the trade mark applications were advertised on the Patent Journal for opposition purposes.
[9] On 30 September 2018 the respondent’s attorneys responded to the applicants’ attorneys’ demand refusing to withdraw the respondent’s Trade Mark Applications.
[10] The statutory opposition period of three months was due to expire on 29 November 2018. On 5 November 2018, the applicants’ attorneys notified the Registrar of Trade Marks in terms of Regulation 52(1) of the regulations promulgated under the Trade Marks Act of the applicants’ interest in opposing the Trade Mark Applications and requested that the certificates of registration not be issued before 28 February 2019. The respondent’s attorneys were sent a copy of that communication. The office of the Registrar of Trade Marks merely acknowledged receipt of the request.
APPLICANTS’ CASE
[11] The gravamen of the applicants’ case was originally that the respondent’s Trade Mark Applications offend the provisions of sections 10(4), 10(12) and 10(14) of the Trade Marks Act 194 of 1993 (‘’the Act’’) and infringes on the rights of the applicants flowing from the applicants’ respective registered trade marks in class 36.
THE RELIEF SOUGHT
[12] The applicants seek an order against the respondent in the following terms:
12.1 “Refusing the trade mark application nos.2017/11542 First ABU DHABI BANK and 2017/11543 GROW STRONGER FIRST ABU DHABI BANK in class 36 in the name of NATIONAL BANK of Abu Dhabi PJSC in terms of Section 10(4) and / or Section 10(12) and / or Section 10(14) of the Trade Marks Act 194 of 1993 in respect of all the services covered by it;
12.2 Directing the Respondent to pay the Applicants’ costs of this application, including the costs of two advocates; …’’
[13] It has to be stated that counsel for the applicants retracted the pursuance of the relief initially sought in terms section 10(12); thus the applicants’ case remains premised only on the contention that the respondent’s trade mark applications offend the provisions of section 10(4) and 10(14).
ANALYSIS
[14] The decision not to pursue the lis over the word ‘’FIRST’’ was a wise one considering the fact that the first and second applicants cannot, by law claim exclusive use of the word ‘FIRST’.
[15] The applicant’s abandonment of the relief premised on the provisions of section 10(12) in effect leaves the issues herein as concerning the applicants’ registered trade mark ‘’FNB’’ and the respondent’s application for the registration of the impugned ‘’FAB’’ as its trade mark which the applicants allege is so closely similar to their registered trade mark as to likely cause confusion or deceit in the market place.
APPLICANTS’ BASIS FOR THE RELIEF SOUGHT
[16] The applicants’ opposition to the registration of the trade mark sought by the respondent is premised on the ground that the respondent’s marks are confusingly similar or so closely similar to First Rand’s trade mark registration for FNB in class 36 that the respondent’s marks offend the provisions of sections 10(4) and 10(14) of the Trade Marks Act. This, in short, relates to the applicant’s contention that the similarities or closeness thereof between the respondents’ FAB sought trade mark is likely to be confused for the second applicant’s registered trade mark, FNB, and, therefore constitutes a misrepresentation in contravention of the provisions of section 10(4) and 10(14) of the Act.
RIGHTS ACQUIRED THROUGH REGISTRATION
[17] The registration of a trade mark confers propriety rights on the holder of the registered trade mark. The provisions of sections 10(4) and 10(14) relied upon by the applicants define conduct that offends the provisions of these sections and, therefore, constitute infringements of their rights of the proprietor of the registered trade mark. The law requires that the alleged infringement relied upon for seeking protection in terms of the provisions of the Act be established by the proprietor of the registered trade mark. It is, therefore, imperative that other laws impacting in one way or the other on trade mark law be traversed at this stage and prior to considering the issues in casu so as to factor in any effect such other laws have or may have on the rights conferred by the provisions of the Trade Marks Act.
THE LEGAL FRAMEWORK
[18] Section 2 of the Trade Marks Act defines ‘trade mark’ to mean, other than a certification trade mark or a collective trade mark;
“a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person.”
THE CONSTITUTION
[19] Section 22 of the Constitution of the Republic of South Africa 108 of 1996 provides for freedom of economic participation and protects the rights of every participant citizen. It affords every citizen freedom of trade, occupation and profession. The section provides that:
“every citizen has the right to choose their trade, occupation or profession freely. The practice of a trade, occupation or profession may be regulated by law.”
INCOME TAX ACT 58 OF 1962
[20] Section 1 of the Income Tax Act defines ‘trade’ to include every profession, trade, business, employment, calling, occupation or venture, including the letting of any property and the use of or the grant of permission to use any patent as defined in the Patents Act or any design as defined in the Designs Act or any trade mark as defined in the Trade Marks Act or any copyright as defined in the Copyright Act or any other property which is of a similar nature.
TRADE MARKS ACT194 0F 1993 (“the Act”)
[21] The overall purpose of the Trade Marks Act 194 of 1993 (‘’the Act’’) is to provide for the registration of trade marks, certification trade marks and collective trade marks and for the protection of the rights acquired through the registration the trade mark from infringement through unauthorised use that is prejudicial to the holder of the rights.
APPLIABLE LEGAL PRINCIPLES
COMPOSITION OF A TRADE MARK
[22] In Puma AG Rudolf Dassier Sport v Global Warming (PTY) Ltd 2010 2 SA 600 (SCA) at para 3 the court stated that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
PERTINENT PROVISIONS THE APPLICANTS RELY UPON
[23] The applicants’ case is buttressed on the contention that the respondent’s marks sought to be registered as trade marks are in contravention of the provisions of section 10(4) and section 10(14) of the Act which preclude the registration of an identical or so closely identical mark to a registered trade mark as to be likely to deceive of cause confusion to the consumers regarding the origin of goods or services rendered. In essence the applicants contend that the registration of the respondent’s mark will infringe on their rights protected by the provisions of the said sections 10(4) and 10(14) of the Act.
[24] The provisions of section 10 of the Act read as follows:
“10. The following marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of section 3 and 70, be liable to be removed from the register;
10(4) a mark in relation to which the applicant for registration has no bona fide intention of using it as a trade mark, either himself or through any person permitted by him to use the mark as contemplated in section 38;
10(14) subject to the provisions of sub section 4, 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.’’
FIRST ISSUE (SECTION 10(4)
[25] Following the provisions of section 10(4) and section 10(14), above, there are two determinations to be made in this matter. Commencing with the provisions of section 10(4), the question to be answered in this regard is whether the respondent has the bona fide intention to use the mark it seeks to register as a trade mark itself or through any other person as contemplated in section 38.
ASSEMENT OF THE COMMITMENT TO USE THE TRADE MARK
KEY WORDS IN SECTIONS 10(4) AND 10(14)
[26] Key words are employed in sections 10(4) and 10(14) of the Act to test the objective presence of the will and determination of the TRADE MARK Registration Applicant to use the mark and to exclude the possibility that the application for registration of the mark has been made for ulterior purposes. Sections 10(4) and 10(14) require, as part of the protection of the rights of the proprietor of a trade mark, that there be an unequivocal resolve on the part of a TRADE MARK Registration Applicant to use the mark. To this end the words “a bona fide intention to the trade mark”. These words are defined in Salt of the Earth Creations (Pty) Ltd & Others v The Gap Inc. 2010 BIP 163 (GNP) at para [19] to mean a definite and present intention to use the mark as a trade mark in relation to certain goods or services at the time the application is made.
[27] In the matters of McDonald’s Corporation v Dax Prop CC; McDonald’s Corporation v Joburgers Drive-in Restaurant (Pty) Ltd TPD 1995 93/19719 (unreported judgment dated 5 October 1995), Southwood J relied on the judgment of the Supreme Court of Appeal in Victoria’s Secret Inc v Edgards Stores Ltd 1994 (3) SA 739 (A) at 745 E –F in concluding that a bona fide intention to use a trade mark means that:
“A man must have an intention to deal and meaning by the intention to deal some definite and present intention to deal, in certain goods or descriptions of goods. I agree that the goods need not be in being at the moment, and that there is futurity indicated in the definition; but the mark is to be a mark which is to be definitely used in respect of which there is a resolve to use it in the immediate future upon or in connection with goods. I think that the words ‘proposed to be used’ mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered.’’
[28] The applicants’ contention and premise for opposition to the registration of the respondent’s mark is that the respondent had no bona fide intention, at the time it sought registration of its marks, to use the marks as its trade marks. In substantiation of this contention the applicants aver, as part of the basis for opposition to the granting of the respondent’s application for registration, that the respondent lacks of possession of the necessary licence to trade in the industry concerned.
[29] The respondent on the other hand has provided some insight into its internal processes regarding the approach to that was adopted; being first to submit the applications and secure registration of the trade marks in South Africa. The approach of initially seeking registration, according to the respondent, was for the protection of its own interests once the application is granted and the relevant certificate of registration is issued.
ANALYSIS
[30] The respondent’s explanation, in my view, is objectively sound and the applicants have not tendered any evidence in reply effectively disproving the respondent’s explanation or evidence. In any event, these being motion proceedings, the Plascon – Evans principle weighs in favour of the version of the respondent where a dispute of fact occurs (Plascon – Evans v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623).
[31] The court in Wightman t/a JW Construction v Headfour (Pty) Ltd and Another 2008 (3) SA 371 (SCA) at [13] found that a real dispute of facts can exist only where the court is satisfied that the party who raised the dispute has, in his affidavit,
“seriously and unambiguously addressed the fact purportedly being disputed’’
As already stated, the respondent’s explanation of its approach is reasonably pessimistic and cautious at the same time. The applicants’ allegation is a patronising speculation. It is, in any event. impossible to read the mind of another without prior in-depth knowledge of them and the depth of their ability and tenacity to carry out their resolve. I am satisfied that the respondent has adequately addressed the issue raised by the applicants.
[32] Furthermore, there is no legal requirement, nor have the applicant’ referenced to any, that possession of the licence concerned is a pre – requisite to the submission of an application for the registration of a trade mark.
[33] It is to be noted that in terms of section 36 of the Act, once issued with a certificate of registration, the proprietor of the trade mark has to commence trading within five years of the issuing of the certificate. Issues relating to the certificate referred to by the applicants, inter alia, can be attended to within the five years’ period. The applicants’ contention is nothing but a suggestion that the respondent puts the cart before the horse.
[34] I cannot fathom that the design of the seemingly complicated proposed mark was work done at the spur of the moment. Resources, including time and money must have been spent on the design alone. This, in my view, would constitute a consolidation of the respondent’s decision and resolve to forge ahead and apply for the registration of its marks so as to conduct business in South Africa in its name. Further expenditure of money must have occurred in meeting the financial requirements that accompany the submission of the applications.
[35] The above described engagements on the part of the respondent exclude the likelihood that the application was made for ulterior purposes. In fact such engagements, in my view, pass the muster of the test laid down in the judgment of the Supreme Court of appeal in the matter of Etraction (Pty) Ltd v Tyrecor (Pty) Ltd 2015 BIP 253 (SCA) at para [33] where the following was stated:
“In considering whether the proprietor of the mark bona fide intended to use it in relation to the goods in respect of which it is registered one examines the facts, as they appear from the course of events leading up to the application for registration, to determine whether there was a genuine intention to use the mark in the course of trade in respect of those goods or whether the registration was intended for an ulterior purpose.’’
[36] Returning to the dispute of fact, in terms of the Plascon – Evans principle, an applicant in motion proceedings must establish its case on the papers. In the event that a dispute of fact arises, the following rule find application:
the version of the respondent prevails, unless thumbed by the proof or
other cogent evidence tendered by the applicant in reply;
the applicant may rely on its averments only to the extent that;
(i) they are admitted by the respondent;
(ii) they are not denied by the respondent;
(iii) they are not genuinely denied by the respondent, despite a denial being raised.
Not only is the applicants’ unsubstantiated averments denied by the respondent, but the latter has countered them with an explanation of its approach that has not and could not possibly be refuted by the applicants.
SECOND ISSUE (SECTION 10(14)
[37] It is common cause that the respondent has not sought nor obtained the consent of the applicants to register its proposed trade mark FAB. Whether it was necessary to obtain such consent depends on the existence of similarities or the closeness thereof to the applicants’ registered trade mark FNB. It is also common cause that the respondent seeks to trade in the same class 36 that the applicants, particularly the second applicant, has a registered trade mark in or under, and to render similar services in competition with the second applicant. The respondent denies that its proposed mark is similar or is so closely similar to that of the applicant as to likely cause confusion or present a misrepresentation.
THE TEST FOR EXISTANCE OF SIMILARITIES
[38] The question to be answered is whether the respondent’s proposed trade mark “FAB”, in respect of First Abu Dhabi Bank and GROW STRONGER FIRST ABU DHABI BANK, is similar or so closely similar to the second applicant’s registered trade mark ‘’FNB’’ as to constitute deception or confusion to the public and would, therefore, be in contravention of the provisions of section 10(14) of the Act.
[39] The common cause fact that the respondent seeks to engage in similar trade and render the same services in class 36 under which the applicants’ mark is registered is a crucial consideration and that has to be constantly borne in mind in the determination to be made.
[40] The test whether similarities exist between the proposed mark and a registered trade mark was enunciated in Plascon – Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 640 in the following words:
“In an 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 or concerned (usually as customer) in the class of goods for which his trade mark has been registered will 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 mind 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, i.e. 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.”
[41] The court went further to explain what the enquiry entails as follows:
“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 have upon the average type of consumer who would be likely to purchase the kind goods to which the marks are applied. This 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 trade mark and due allowance must be made for this. If each of the marks contains a main 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 impression or by some significant or striking feature than by a photographic recollection of the whole. And finally consideration must be given to the manner in which the marks are likely to be employed as, for example, the use of a name mark in conjunction with its numerical description of the goods”.
[42] I am inclined to view the marks concerned as evidence and, in doing so, to first breakdown each into components followed by a consideration of the components both marks – an approach that is likely, in my view, to assist in reaching an informed decision. The breaking down of a body of each mark into its component parts is obviously a useful aid to a proper evaluation of it. ‘’But, in doing so, one must guard against a tendency to focus too intently upon a separate and individual mark. Doubt of the existence of similarities may arise when each mark is viewed individually in isolation. That doubt may be eliminated if the marks are again viewed together side by side. That approach will allows for a broad and indulgent assessment. A detailed and critical examination of each mark is crucial. Unless that is done, it may not be possible to identify the wood from the tree (see Moshephi and Others v R …..)
[43] The formulation of the principle in Plascon - Evans has been approved in several decisions of the Supreme Court of Appeal, inter alia, in the matter of Bata Ltd v Face Fashions CC 2001 (1) SA 844 (SCA) where the court further referred to a decision by the European Court of Justice in Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 at 224 where it is stated that the likelihood of the confusion must be appreciated globally and that the;
“Global appreciation of the visual, oral or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components……’’
CONSIDERATION / COMPARISON OF THE MARKS CONCERNED
[44] The applicant’s assertions in para 29 of its heads of argument that “there can be no doubt” that the respective marks are confusingly similar is not supported by the facts. In fact, it incorrect for the applicant to even suggest that the comparison is between the marks FNB and FAB. The legal position is that each mark is viewed as a whole. Thus First National Bank (FNB) on the one hand, and GROW STRONGER, FIRST BANK OF ABU DHABI with a FLASH red logo and the Arabic script, on the other, are completely dissimilar.
[45] It is simply inconceivable that the described elements in the mark proposed by the respondent can be ignored.
[46] I cannot find that these marks are similar or so closely similar that a confusion of the one for the other may arise nor can deception be discerned from the mark of the respondent. The difference between the respondent’s proposed mark and the applicants’ registered mark is glaring. I cannot find, consequently, that the respondent’s proposed mark offends or that, if registered, will offend the provisions of section 10(14) of the Act.
CONCLUSION
[47] The applicants have not demonstrated the infringements they sought to rely on in opposition to the respondent’s trade mark registration application. In fact, I find the opposition unwittingly patronising and speculatory on the grounds that, by their own version, the applicants do not know much about the respondent, save the hearsay evidence the founding affidavit is replete of and the suggestion of non – existent pre –requisites for eligibility to apply for the registration of a class 36 trade mark.
[48] The applicant clearly has no factual grounding for opposing the respondent’s applications, the applicant’s conduct, in the circumstances, has the hallmarks of a drive to thwart lawful competition – conduct that is deservedly described by the court as antithetical (see Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA). Resulting from this and the earlier findings in this judgment, the applicants’ opposition to the respondent’s trade mark applications stands to be dismissed.
COSTS
[49] The general principle that costs follow the result in proceedings apply.
ORDER
[50] Resulting from the findings and conclusion in this judgment, the following order is made:
1. The applicants’ opposition to the registration of the respondent’s proposed trade mark is dismissed.
2. The applicants are ordered to pay the costs of the application which costs shall include the costs consequent upon the employment of senior counsel.
__________________________
MPN MBONGWE
JUDGE OF THE HIGH COURT
GAUTENG DIVISION, PRETORIA.
APPEARANCES
For the Applicant Phillip Ginsburg SC
Instructed by Adams & Adams Attorneys
Lynnwood Bridge Office Park
4 Daventry Street. PRETORIA
Email: Nishan.Singh@adams.africa
Tel: 012 432 6171
For the Respondent R Michau SC
Instructed by 5 Inanda Green Business Park
54 Wierda Road West
Wierda Valley. SANDTON
Email: tammip@kisch-ip.com
Tel: 011 324 3089
THIS JUDGMENT WAS ELECTRONICALLY TRANSMITTED TO THE PARTIES ON 30 JUNE 2023.
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