Safari Surf Shop CC v Heavywater and others
[1996] 4 All SA 316 (D)
Division:
Durban and Coast Local Division
Date:
5 July 1996
Case No:
3183/96
Before:
McCall J
Sourced by:
ES Law and MJ Lasich
. Editor's Summary . Cases Referred to . Judgment .
Civil Procedure Application for interdict Urgency Court holding it to be sufficient to depart with time constraints as
prescribed in rule 6(5)( b) of the Consolidated Rules of the Supreme Court.
Page 317 of [1996] 4 All SA 316 (D)
Civil Procedure Defence of acquiescence Tacit consent a requirement.
Civil Procedure Estoppel Onus resting on the Respondents to establish a representation which induced them to act to
their prejudice.
Civil Procedure Res Judicata or the "once and for all" rule Cause of action and parties differing Constituting no
defence.
Competition Passing off Applicant would clearly suffer ongoing damages should the surfing public purchase the
Respondent's surfboards believing them to be the Applicant's.
Trade marks Trade Marks Act 194 of 1993 Section 34(1)(a) What constitutes an infringement of a trade mark Use
of logo constituting an infringement of Applicant's registered trade mark Similarity of logo likely to cause confusion or to
deceive Continual use of the logo would be detrimental to the Applicant's repute.
Editor's Summary
The Applicant (a manufacturer of surfboards ) is the registered proprietor of a trade mark in the word "spider" and
incorporates a "spider device" as part of its logo on its surfboards. Pursuant to the Respondents adopting the name
"spyderbilt" on their surfboards the Applicant was granted relief restraining the Respondents from using the name.
The Respondents redesigned their logo adopting stylised spiders and the name "Jarvis" on their surfboards. The
Applicant consequently brought an urgent application against the Respondents alleging that the use of the stylised
spiders constituted an infringement of section 34(1)(a) of the Trade Marks Act 194 of 1993 ("the Act"), alternatively
a passing off of the said trade mark. The Respondents opposed the application denying the said infringement of the
Applicant's trade mark alternatively a passing off and citing estoppel, the exceptio rei judicatae, acquiescence and a
lack of urgency as defences.
Held The Court dealt with the issues raised by the Respondents and concluded that the application was one of a
matter of urgency and sufficiently warranted a departure from the time constraints as prescribed in rule 6(5)(b) of
the Consolidated Rules of the Supreme Court.
The Court then considered the defence of res judicata or the "once and for all" rule. It was evident that there
was no merit in such defence as the parties in the present application were not the same as those in the first
application and the cause of action also differed in both applications. The defence consequently failed.
With regard to the defence of acquiescence, the Court held that the Applicant had not tacitly consented to the
use of the stylised spider logo and accordingly dismissed same.
The Court then dealt with the issue of trade mark infringement and considered the legal principles as
propounded in PlasconEvans Paints v Van Riebeeck Paints 1984 (3) SA 623 (A) 640G641E in which Corbett JA noted
that the onus rests on the plaintiff to show the probability or likelihood of deception or confusion. The Court
considered the definitions of "mark" a n d "device" and concluded that the use of a device also constituted an
infringement of a trade mark consisting of a word. The Court referred to section 34(1) of the Act and held that the
Respondent's stylised spider logo closely resembled the Applicant's trade mark in the word "spider" so as to cause
confusion or to deceive. The Court further held that the Respondent's use of the stylised spider logo constituted an
infringement of the Applicant's trade mark in terms of the above
Page 318 of [1996] 4 All SA 316 (D)
section and that it would be detrimental to the repute of the Applicant's "spider" trade mark.
The Court held that the Applicant had made out a prima facie case of passing off as it would clearly suffer ongoing
damages if members of the surfing public were to purchase the Respondent's surfboards, believing them to be the
Applicant's , because of the stylised spider logo.
The Court accordingly granted the Applicant an interim order pending further action, interdicting the Respondents