[5] Essentially, the second respondent had contended that the applicant's registered name was undesirable
because it is confusingly similar to its Town Lodge trademark, on the basis that a significant number of
persons will probably be confused or deceived into believing that Cape Town Lodge is associated in the
course of trade with the second respondent's chain of Town Lodge hotels. On bases that I will deal with in
the course of this judgment, the applicant resists the second respondent's contentions, the details of which I
will also deal with in a more nuanced way, assisted as I am by my notes of Mr Morley SC's arguments, and his
written Heads of Argument. Mr Morley appeared for the second respondent.
Page 37 of [2008] 2 All SA 34 (C)
[6] The second issue is the relief sought by the second respondent to avoid confusion, I will refer to the parties
as they were in the main application in its counterapplication. In brief, the second respondent invokes
section 34 of the Act for alleging that two of its registered marks, both of them word marks, Town Lodge and
Town Lodge Limited have been infringed. Even though it had appeared that reliance would be placed on
allegation of infringement of sections 34(1)(a), 34(1)(b) o r 34(1)(c) for the alleged infringement, on the
hearing day, Mr Morley pointedly stated that reliance would be placed solely on section 34(1)(a).
[7] Over and above invoking the Act, the second respondent relied on the common law for alleging that the
applicant is passing off its business and hotel services as and for those of the second respondent, or as being
associated in the course of trade with the second respondent by using, in relation to its services, the mark
Cape Town Lodge. Mr SholtoDouglas SC and once again I rely on my notes and excellent Heads of Argument
and argument in Court for my understanding of his argument ably represented the applicant's resistance to
these allegations of trademark infringement and passing off. The epicentre of his argument is that the second
respondent's entire case, properly construed, is predicated on the similarity in the names Cape Town Lodge
and Town Lodge. That being so, a simple exercise, principally, of demonstrating that the getup used by the
applicant, seen in conjunction with the getup used by the second respondent in relation to its Town Lodge
chain of hotels, would be sufficient to put paid to any claim by the second respondent that there is ever any
prospect of the public being confused or deceived.
Background facts from the papers
[8] The applicant commenced trading in Cape Town on 9 July 2001. It had thus been trading for almost a year
before a letter of demand came from the second respondent, apparently at the prompting of its attorneys.
The objection contained in a lengthy letter from the second respondent's attorneys was basically that the
applicant's close corporation name Cape Town Lodge CC was both undesirable and calculated to cause
damage within the meaning of section 20(2) of the Close Corporations Act 69 of 1984 ("the CC Act"). It
appears that the Registrar ordered the applicant to change its name only on the basis that the name was
undesirable.
[9] For the sake of completeness, I recall hereunder the letters between the attorneys that triggered the dispute
that eventually ended in the litigation that this judgment is the consequence of. Although the letters are on
the verbose side, they capture the essence of the issues through the eyes of the respective legal
representatives.
The first salvo came from the respondents' attorneys, in a letter dated 8 July 2002, sent to one Mr MD
Mokhaba, in his capacity as the Registrar of Close Corporations, Pretoria. The letter reads as follows:
"1.
We act on behalf of City Lodge Holdings (Share Block) (Pty) Ltd (hereinafter referred to as 'the Objector'), a
South African company of 38 Wierda Road West, Wierda Valley, Sandton, Gauteng and its subsidiary. City
Lodge Holdings (Share Block) (Pty) Ltd.
2.
The Objector is the registered proprietor of the trade mark Town Lodge and other trade marks incorporating
Town Lodge in South Africa.
3.
The Objector wishes to object to the registration of the name Cape Town Lodge CC (hereinafter referred to as
'the respondent'). This objection is based on s 20(2) of the Close Corporations Act 69 of 1984
Page 38 of [2008] 2 All SA 34 (C)
(hereinafter referred to as 'the Act'). The grounds for this objection are that the name Cape Town Lodge CC is
undesirable and calculated to cause damage to the business of the Objector within the scope of section 20(2) of
the Act.
4.
We respectfully submit that the Objector's objection to the close corporation name should be upheld because of
the Objector's extensive commonlaw rights and registered trade mark rights in and to the trademark Town
Lodge and various other trade marks incorporating Town Lodge as acquired in terms of statutory protection
afforded under the Trade Marks Act 194 of 1993 (hereinafter referred to as 'the Trade Marks Act').
5.
The Objector's Trade Mark and CommonLaw Rights in and to its Trade Mark Town Lodge
5.1
The Objector and its predecessor, City Lodge Hotels (Pty) Ltd, carry on business as hotel operators in
major centres in the Republic of South Africa and provide hotel accommodation and related services
under the name and style of the wellknown City Lodge, Town Lodge, Road Lodge and Courtyard Hotels.
5.2
The Objector is the registered proprietor in South Africa of the trade mark Town Lodge, Town Lodge
Limited and City LodgeTown Lodge in Class 42 in relation to, inter alia, accommodation and hotel
services. The details of the Objector's trade mark registrations are annexed hereto marked 'A'.
5.3
The Objector has operated its Town Lodge motels in South Africa since 1990.
5.4
The Objector has six Town Lodge hotels in South Africa, namely: