View Parallel Citation
The first respondent had by then extended its franchise operation to the Western Cape. The applicant had brought
the first application and it was pending. The applicant knew that the first respondent disputed the alleged passing
off and that the first respondent asserted that it had the right to use the name Nino. The first respondent had
advised the applicant that in its view it had no right to use the name Nino in a restaurant in Camps Bay and that if it
did so, an application for an interdict would be brought.
[61] The applicant took the decision to open Nino Camps Bay with full knowledge of the first respondent's rights in
respect of the trade mark and its
Page 547 of [1998] 3 All SA 527 (C)
use of the name Nino in its franchise business. The applicant was aware of the first respondent's opposition to its
use of the name in Camps Bay. It must have been aware that there would be confusion between Nino Camps Bay
and the first respondent's business, including Nino's Cavendish Square. Confusion between Nino Greenmarket
Square and Nino's Cavendish Square had already been alleged by the applicant in the first application. In these
circumstances I cannot find that the applicant's use of the name Nino in respect of the Camps Bay restaurant is
bona fide as contemplated in section 34(2)(a).
[62] For the same reasons I do not regard the applicants use of the name Nino as being consistent with fair
practice as contemplated by the second proviso to section 34(2)(a).
The section 36(1) defence
[63] The applicant's reliance on section 36(1) of the Act also cannot succeed. Section 36(1) provides as follows:
"36.
(1)
Nothing in this Act shall allow the proprietor of a registered trade mark to interfere with or restrain the use by
any person of a trade mark identical with or nearly resembling it in respect of goods or services in relation to
which that person or a predecessor in title of his has made continuous and bona fide use of that trade mark
from a date anterior
(a)
to the use of the firstmentioned trade mark in relation to those goods or services by the proprietor or a
predecessor in title of his; or
(b)
to the registration of the firstmentioned trade mark in respect of those goods or services in the name of
the proprietor or a predecessor in title of his,
whichever is the earlier, or to object (on such use being proved) to the trade mark of that person being
registered in respect of those goods or services under section 14."
The underlying purpose of this section is to prevent a proprietor of a trade mark from exercising his rights merely on
the basis of priority of registration and it preserves whatever commonlaw rights there may be antecedent to the
rights of the registered proprietor.
[64] The applicant can only rely on this section if it has made continuous and bona fide use of the trade mark from
a date earlier than the use of the trade mark by the proprietor or his predecessor in title or from a date prior to the
registration of the trade mark in the name of the proprietor or his predecessor in title, whichever is the earlier. In
this case the first respondent and its predecessor in title made use of the trade mark prior to the registration
thereof and the relevant date is determined by such
View Parallel Citation
use. The use of the trade mark dates from 1989 when the Braamfontein restaurant was sold to Korkorris. Korkorris
and, after its incorporation, the first respondent have made continuous use of the mark. Such use is prior to the
applicant's use of the name Nino, which commenced in 1992. The applicant is therefore unable to establish its prior
use as required by the section. In view of this conclusion it is not necessary to deal with the requirement of
continuous and bona fide use in this context.
[65] The other requisites for the grant of a final interdict are not in issue. The second application therefore
succeeds and the first respondent is entitled to confirmation of the rule nisi and to the interdict sought by it. The
order which I
Page 548 of [1998] 3 All SA 527 (C)
intend to make affords the applicant a period of time within which to comply with the order.
[66] Counsel were agreed that in respect of both applications the costs should follow the result. This is subject to
the tender of costs made by the first respondent in favour of the applicant.
The order
[67] The order which I accordingly make is the following:
1.1
The application brought by the applicant (Nino Coffee Bar and Restaurant CC) against the respondents (Nino's Italian
Coffee and Sandwich Bar CC and Christine Shields t/a Nino's Internet Café) under case number 7405/97 is refused.
1.2
The applicant is ordered to pay the respondents' costs of that application, including the costs of the hearing on 1
September 1997 and 22 October 1997.