[42] The applicant's case was that in view of the authorities, the respondent had not succeeded to demonstrate
how there was a likelihood of deception or confusion as a result of the use of Cape Town Lodge in relation to
its hotel business. For one thing, the two businesses served two different markets. Town Lodge rates were
significantly lower than those of Cape Town Lodge. Town Lodge targeted businessmen on the road, hence its
location near airports and highways whereas Cape Town Lodge catered for the overseas tourist market, from
which it followed the two businesses would be marketed differently. In the absence of evidence that actual
confusion had taken place, the respondent could not be held to have succeeded in proving passing off, so the
argument went.
[43] This argument was tied by Mr SholtoDouglas to an earlier submission he had made, namely, that so blissfully
unaware was the respondent that its mark was being infringed that for almost a year, and until this was
brought to its attention by its lawyers, respondent had no reason to complain about the Cape Town Lodge CC
mark. Besides, even when it did have a reason to complain, having been so advised by its lawyers, when
there was open to it a remedy of proceeding by way of a spirited application for an interdict and a damages
claim something it now only raised by way of counterapplication the respondent had taken the unusual
course of proceeding merely by way of a complaint to the Registrar of Close Corporations. The respondent
had even been understood, so it would was argued, to have taken a view that even if the applicant carried
on business as Cape Town Lodge, it would not be bothered by the applicant doing so, for as long as it did not
register the name as a mark.
[44] With respect to whether the Cape Town Lodge CC mark was an unlawful infringement of the respondent's
mark, the real issue, it was submitted for the applicant, was whether Cape Town Lodge so nearly resembles
Town Lodge as to be likely to deceive or cause confusion. Given the authorities referred to in this judgment
already, it was argued that whilst
"the opinions of trade and other witnesses as to what would be likely [to deceive or cause confusion] may be helpful,
. . . in the end it is the judge, applying the right principles, who has to answer the question".
[45] I agree.
In this case, I have to be satisfied, that, in the end, after applying all the arguments I heard to the facts of
this case, on balance, a substantial number of customers of Town Lodge will be deceived or confused by the
similarity between Town Lodge and Cape Town Lodge. One of the "right principles", among others, which I need
to apply in determining whether, on balance, I must find for the trade mark holder or the alleged infringer
thereof, is whether or not the words used in the mark consist entirely of words in everyday use which are
descriptive of its services. I am very much persuaded by the correctness of the dictum in Rovex Ltd and another
v Prima Toys (Pty) Ltd,26 which is attributed to an author Kerly which runs as follows:
". . .If a defendant uses an ordinary English word or words, there is no doubt the public will be less likely to regard it
as a proprietary word and associate it with a similar word registered by the plaintiff than would be the case if both
words were invented words or words which had no meaning appropriate to the goods in question."
Page 65 of [2008] 2 All SA 34 (C)
[46] I am equally persuaded by the following dictum of an Australian Court in Hornsby Building Information Centre
(Pty) Ltd v Sydney Building Information Centre27 (quoted in Cadbury Schweppes v Pub Squash Co).28
In this case, it was held that:
"There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name
Because it is descriptive it is equally applicable to any business of a like kind; its very descriptiveness ensures that it
is not distinctive of any particular business and hence its application to other like business will not ordinarily mislead
the public."
[47] It follows from what I have said above that I am in respectful agreement with the submission made by Mr
SholtoDouglas that the use of town and lodge in the hospitality industry is not confined to usage by the
respondent only, as examples like Town House (about which more later), Down Town Lodge and Grahamstown
Lodge showed. I am equally convinced that an ordinary hotel customer would not read Cape Town Lodge a s
Cape Town Lodge. If there was a Town Lodge in Cape Town in the manner in which such hotels exist elsewhere
in the Republic as indicated earlier, the ordinary hotel customer would sooner expect one such hotel to be
referred to as the Cape Town, Town Lodge. This is so, in my view, because Cape Town constitutes a geographic
indicator which is clearly a bona fide description of the geographical origin of the relevant services. The mere
fact that Cape Town is spelt as two words makes it no less an authentic geographic description of it as a city of
Cape Town than Simon's Town, or Queenstown or Hopetown, Grahamstown or many other South African cities
that have town as a component of their authentic spelling, are.
[48] Consequently, on any construction, and for the reasons articulated in the judgment, and in line with the
authorities, Cape Town Lodge can hardly be regarded as an undesirable name on any basis articulated by the
respondent, in my respectful view. It follows that it cannot therefore be properly said that the name is
calculated to cause damage in any sense that was argued for by Mr Morley. I similarly cannot see my way
clear to holding, properly, in light of the principles developed by the Courts, that this is a case where I can find
for the respondent in its complaint of a passingoff by the applicant. This would be so because there is no
likelihood of a deception or a confusion by the average customer that the applicant, by the mere use of its
mark, is passing off its business and services as that of the respondent. Moreover, I cannot see why it would
be inappropriate for me to compare the get up of the two litigants for purposes of arriving at the conclusion
that I have come to as far as that goes. In having done so, as I have done, it is clear to me that there is no
way anyone, reasonably looking at the getup of the two litigants herein, could be deceived or confused in the
manner contended for by the respondent. A case for passing off is insupportable, in my respectful view, on
the facts of this case, and on the legal principles.