PlasconEvans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623
(A)
483
Premier Trading Co (Pty) Ltd and another v Sporttopia (Pty) Ltd
2000 (3) SA 259 (A)
478
United Kingdom
Premier Motor Company (Birmingham) Ltd v Premier Driving School
(Birmingham) Ltd 79 [1962] RPC 222 F [HN 1]
482
Judgment
CLEAVER J
[1] In these proceedings, brought by way of motion, the applicants seek final interdictory relief to prevent the
first, alternatively the second, respondent from using the mark "Value". Much of the application related to the
alleged infringement of three trade marks registered in the name of the second applicant, but it is clear from
the argument which was presented in court that the case for the applicants is in the main that the first
respondent is guilty of passingoff its services as those of either the first or the second applicant.
[2] Although I will deal first with the application for passingoff, it may be convenient to record the details of the
trade mark registrations involved since these highlight the original nature of the business of the applicants.
The second applicant is the registered proprietor of the following trade marks:
1.
Trade mark number 82/07958 Value Truck Rental in class 39 in respect of "Transportation, including
freightage, hauling, truck/car hire and leasing". This mark was registered on 12 October 1982.
2.
Trade mark number 94/04497 Value Truck Rental in class 39 in respect of "Transportation services;
vehicle rental services; freighting and hauling services; packaging and storage of goods; travel
arrangement". This mark was registered on 5 May 1994.
3.
Trade mark number 97/01013 Value Truck Rental in class 39 in respect of "Transportation including
freightage, hauling, truck/car hire and leasing". This mark was registered on 23 January 1997.
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The first two mentioned trade marks incorporate a device or logo in which a large truck is depicted. The third
trade mark contains only the words "Value Truck Rental".
[3] The first applicant, Value Group Limited ("Value Group"), has its principal place of business in Isando, Gauteng
and is the holding company of other companies in what is described as the "Value Group". It is a public
company listed on the Johannesburg Stock Exchange. The second applicant, Value Logistics Limited ("Value
Logistics"), is the operating entity in the Value Group and as such all operational requirements of the group
are met through and by it.
[4] Although the trade marks on which the applicants rely all incorporate the words "Truck Rental" and although
the business of the applicants was initially known as "Value Truck Rental", the case for the applicants in the
passingoff application is that it has acquired commonlaw rights to the mark "Value" simpliciter and that it is
through the use of this word in its name that the first respondent is passingoff its business and services as
those of the applicants.
[5] The applicants' business was established by Mr Steven Gottschalk ("Gottschalk"). Gottschalk records that he
founded the Value Group in Pretoria during 1981 when he commenced a transportation business with seven
trucks. In saying that he founded the Value Group in 1981 I do not understand Gottschalk to have indicated
that in 1981 the business was known as the Value Group, but rather that it was then that he started the
business which is today known as the Value Group. I might add that the manner in which the founding
affidavit is framed certainly creates the impression that the applicants have been known as the Value Group
from early on, but that is not so. In 1981 the business was known as Value Truck Rental and trucks which
were leased out bore the name of Value Truck Rental. Gottschalk states that his business expanded rapidly
and began to offer fully manned transport services that targeted a wider market than merely the truck rental
market. During 1988 the business expanded to Johannesburg and Durban and another depot was opened in
Isando from where trucks were leased and transportation services were provided. By 1988 the fleet had
grown to approximately 500 trucks that were transporting goods nationwide. There are three depots in
Johannesburg, one in Pretoria and two in Durban. As from the mid1990's Value Group enlarged the size of its
fleet and supporting infrastructure and in addition to its truck rental services provided a comprehensive
logistical transportation service. Although the truck rental business is still a core component, the business of
the Value Group currently includes a fridge fleet, chauffeur service, moving billboards, materials handling and
equipment, a service known as 7PL Solutions (a combination of the provision of resources and consultancy
services to customers' supply chains); and car rental. According to Gottschalk, the Value Group is now the
largest consumer truck rental company in the country. As far as the provision of services to private enterprise
is concerned, it also has one of the largest fleets in the country.
[6] All that appears in the founding affidavit in relation to the applicants' car rental business is the following:
"As part of its expanding range of services, Value opened a car rental division during the 1990s in partnership with
Lazarus Ford. This division provided a
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