betrokke is, hul volledige geregistreerde maatskappyname gebruik mag word, maar in die
spreektaal kom dit vir my waarskynlik voor dat die name 'Krediet Bank' met verwysing na
elkeen gebruik sal word. Inderdaad word applikant en die betrokke respondente onder
hierdie naam aan die publiek beken gestel in die Republiek.'
6.5
In light of the Objector's extensive use and reputation, it is submitted that the Objector's trade mark
Town Lodge qualifies for protection as a wellknown trade mark within the meaning of section 35 of the
Trade Marks Act. In the case of MacDonald's Corporation v Joburger's DriveInn Restaurant (Pty) Ltd and
Dax Prop. CC 1997 (1) SA 1 (A) the Court held that a mark is wellknown in the Republic if it is well
known to persons interested in the goods or services to which the mark relates. It is submitted that the
Objector's trade mark is wellknown in South Africa in the relevant industries, namely in the hotel
industry.
6.6
It should further be appreciated that the Objector has absolutely no control whatsoever over the quality
of goods or services supplied by Cape Town Lodge CC. In this regard the Registrar is respectfully
referred to the Ewing case (op cit at 238, Line 50 where Warrington J said:
'He (the plaintiff) has proved that the defendants have adopted such a name as may lead people
who have dealings with the plaintiff to believe that the defendant's business is a branch of or is
associated with the plaintiff's business. To induce a belief that my business is a branch of another
man's business may do that other man damage in all kinds of ways. The quality of the goods I
sell; the kind of business I do; the credit or otherwise which I might enjoy all those things may
immensely injure the other man who is assumed wrongly to be associated with me It is just that
kind of injury which what the defendants have done here is likely to occasion.' (Own emphasis).
6.7
Dilution
It is respectfully submitted that the use of the trading style Cape Town Lodge CC will result in
infringement of the Objector's trade mark rights in terms of section 34(1)(c) of the Trade Marks Act 194
of 1993 which provides as follows:
'34(1) The rights acquired by registration of a trade mark shall be infringed by
(c)
the unauthorised use in the course of trade in relation to any goods or services of a mark
which is identical or similar to a trade mark registered, if such trade mark is well known in
the Republic and the use of the said mark would be likely to take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the registered trade mark,
notwithstanding the absence of confusion or deception: Provided that the provisions of the
paragraph shall not apply to a trade mark referred to in section 70(2).'
It is submitted that the use of Town Lodge in the respondent's close corporation name will dilute the
Objector's trade mark rights in and to its trade mark Town Lodge.
The introduction of the dilution protection in section 34(1)(c) makes it possible for the proprietor of a
trade mark to take steps
Page 45 of [2008] 2 All SA 34 (C)
against an infringer (including a third party making unauthorised use of its trade mark in a corporate
name) where such use is likely to take unfair advantage of, or be detrimental to the distinctive character
or repute of the Objector's trade mark.
It is submitted that the Objector enjoys immense goodwill in its trade mark Town Lodge in South Africa.
Accordingly, any use by a third party of a business name incorporating a trade mark which is identical
thereto will inevitably dilute the Objector's trade mark rights.
7.
Bad Faith
A letter of demand dated 2 July 2002 was addressed by ourselves, the legal representatives of the Objector, to
the respondent setting out the Objector's trademark and commonlaw rights in and to the trade mark Town
Lodge under threat of formal close corporation name objection proceedings being instituted. The letter of
demand was addressed via registered mail to the respondent's registered address, to its postal address, to the
address, of its member and to its accounting officers. A copy of the letter of demand is attached marked
Annexure 'C'. The respondent has not confirmed that it has/will attend to a name change of the close
corporation and it is submitted that this indicates the respondent's mala fides. Furthermore, the respondent's
name was changed in approximately June 2001 from Days Inn Hotel to Cape Town Lodge. The change of name
is, it is submitted, further evidence of the respondent's bad faith and intention to rideoff the wellestablished
reputation which the Objector enjoys in and to its trade mark Town Lodge.
8.
Conclusion
8.1
Accordingly, if members of the public believe that the party trading under the name Cape Town Lodge
CC is associated with the Objector, the Objector will be prejudiced. It must further be appreciated that
the Objector enjoys immense goodwill in its trade mark Town Lodge in South Africa.
8.2
The Registrar is finally referred to an objection decided by it under reference M13/4/9 in the matter of
Golden Retail Services (Pty) Limited, where the following is stated:
'Without detracting from the generality of the provision of the Act relating to the names of Companies
which may be undesirable, the Registrar would in the normal course of events, amongst others, refuse
to register the founding statement of a corporation containing a particular name or order a change of
name if he has reason to believe that some other body or business is already known in the Republic
under the name, or a confusingly similar name' (own emphasis).
It is submitted on behalf of the Objector that the above quotation is applicable to the current proceedings
as is shown by the above arguments.