Sandton
Johannesburg International Airport
Menlo Park
Midrand
Nelspruit
Polokwane (Pietersburg)
5.5
The Objector's annual turnover in respect of its Town Lodge hotels has been as follows:
Year ended June 2000 ±R41 million
Year ended June 2001 ±R46 million
Year ended June 2002 ±R53 million
The figures from 1990 were not available at the time of lodging this objection but can be made available
to your office upon request.
5.6
The Objector spends approximately R3 million annually promoting its services rendered under its Town
Lodge trade mark.
5.7
The Objector makes use of its trade mark Town Lodge on its hotels, on signage, on its corporate
stationery and on its brochures and other marketing material. Copies of samples of the Objector's use of
its trade mark Town Lodge are annexed hereto marked Annexures 'B1' to 'B20'.
5.8
As a consequence of its extensive use of its trade mark Town Lodge and of its marketing activities, the
Objector enjoys considerable commonlaw rights in and to its trade mark Town Lodge to which an
enormous reputation and goodwill of immense commercial value attach.
Page 39 of [2008] 2 All SA 34 (C)
6.
Objection to Close Corporation Name Cape Town Lodge CC
6.1
Calculated to cause damage
6.1.1 In view of the fact that the close corporation's name incorporates Town Lodge, which is identical
to the Objector's Town Lodge mark, the Objector is of the opinion that members of the public will
be confused into believing that there is a connection in the course of trade between the
respondent and the Objector. This is particularly so in view of the fact that the respondent's
activities are identical to those of the Objector, namely services in the hotel industry. In terms of
section 20(2) of the Act it is submitted that the name Cape Town Lodge CC is calculated to cause
damage to the Objector's business.
6.1.2 The decision in Hollywood Curl (Pty) Limited v Twins Products (Pty) Limited 1989 (1) SA 225 (A) is
relevant in that confusion is likely between the various companies' products. In the first case
(reported at 1989 (1) SA 236 (A)), the Court found at 251F251I that there was a likelihood of
confusion between respondent's products which all contained the word 'Hollywood' in combination
with other words, for example, between 'Hollywood Seven day', 'Mr Hollywood' and 'Hollywood
Lucky Seven', and appellant's product, which was marketed under the name of 'Hollywood Curl'.
Based on this likelihood of confusion the court found the following on 263F and 263I:
'That being so, (passingoff being established) if seems to me that by parity of reasoning,
the registration of the appellant under the name Hollywood Curl (Pty) Limited was
calculated to cause damage to Twins in the aforementioned respects because of the
anticipated and actual use of the Hollywood Curl name, both in relation to the business
conducted by the appellant and/or services provided and in relation to goods marketed by
it. Consequently, Twins was entitled, in terms of section 45(2) of the Act, to object to the
name under which appellant had been registered. . . Consequently, Twins was entitled, in
terms of section 45(2) of the Act, to object to the name under which appellant had been
registered. . . Clearly at common law a company may be held to have been guilty of
passingoff where it adopts and trades under a company name which has a deceptive
resemblance to the name used by another, whether an individual or a company in his or its
business where the name has become distinctive of the business.'
6.1.3 The Objector has acquired an enormous reputation and goodwill in and to the trade mark Town
Lodge in South Africa and the use of the name Cape Town Lodge CC will amount to trade mark
infringement in terms of sections 34(1)(a) and (c) and section 35 of the Trade Marks Act 194 of
1993 as well as to passingoff and unlawful competition under the common law.
6.2
Likelihood of Confusion
It must be noted that the respondent's name incorporates Town Lodge. The use by the respondent of a
close corporation name incorporating Town Lodge is undesirable and likely to cause
Page 40 of [2008] 2 All SA 34 (C)
confusion. This is in view of the Objector's extensive reputation and goodwill in and to the trade mark
Town Lodge and in view of the direct overlap in activities of the Objector and the respondent. The
respondent's principal business is listed at the Close Corporation's Office as 'Participation in all aspects
of the hotel industry including management, ownership and trading as such'.
6.2.1 With regard to the likelihood of confusion in this particular instance, it was said in Link Estates