which became the applicant close corporation in 1972. From about 1975 he commenced putting his nickname on
surfboards shaped by him and it is common cause that by 1975 he had acquired at least a local reputation in the
name "SPIDER MURPHY". During or about 1976 he contributed to a design of a logo contained in a decal for placing
on surfboards shaped by him which bore the words "Spider Murphy International Surf Designs". In 1986 he
contributed to the design of a "SPIDER MURPHY" logo which had a web design. As the reputation associated with
his nickname grew, it was realised that it should be registered as a trade mark which led to the registration of the
trade mark "Spider". During or about 1986 the logo was redesigned and included what has been described in the
papers as a "naturalistic" depiction of a spider. There is a dispute of fact in the papers as to how frequently the
logo incorporating the spider was placed on the applicant's surfboards but it is common cause that it was placed on
some of the applicant's surfboards and that the spider device has changed and evolved to the form which is used
by the applicant at present. The applicant claims that almost every surfboard shaped by Murphy is either hand
signed by him or bears a logo and a spider device somewhere on the surfboard.
It is common cause that earlier this year the second and third respondents were engaged in a business
manufacturing and selling surfboards bearing the name "Spyderbilt". This lead to the bringing of an application, in
this Court, by the applicant for an order, against five respondents, including the second and
Page 320 of [1996] 4 All SA 316 (D)
third respondents in this application, to interdict them from using the name "Spyderbilt". That application was
opposed but an interim interdict was granted preventing manufacturing, selling or dealing in surfboards containing
the mark "Spyderbilt", and other relief, pending the outcome of the application. The application was adjourned but
the respondents in that application elected not to oppose the matter any further and it was settled on the basis
that the interim relief granted would be made into an order for final relief and that the respondents would be
ordered to pay the applicant's costs on a party and party scale.
Before the granting of the said interim and final interdicts the respondents were using the name "Spyderbilt" by
placing an oval shaped logo containing the word "Spyderbilt" on their surfboards and placing, some distance away
from that logo, the stylised representation of a spider. In the previous application the applicant's sought no relief in
respect of the representation of a spider.
Since the granting of the aforesaid final order the respondents have removed the name "Spyderbilt" from the
middle of the oval logo. It appears that their surfboards now bear a logo comprising an oval containing one or two
stylised spiders superimposed at an angle on a red striped background, and also a single stylised spider, not
contained within an oval, some distance away from the spiders within the oval, with or without yet another logo
comprising an oval containing the name "Jarvis".
Furthermore, since the said order was granted, there has appeared in the May/June 1996 issue of Zigzag
magazine, a surfing magazine:
(a)
A picture of one of the first respondent's surfboards, (on a page showing a number of other surfboards including one
of the applicant's surfboards) and, alongside the picture, the name of the first respondent's surfboard is given as
simply the oval logo containing the two spiders followed by the word "SURFBOARDS". In contrast the names of the
other five surfboards depicted on the same page are names such as "BEACH BOARDS" or, in the case of the
applicant's board, "SAFARI SURFBOARDS";
(b)
A full page advertisement containing the stylised spider within an oval over the words "SPYDERBILT SOME CLOTHES"
under a picture of a surfboard bearing an oval logo, the writing within which is not decipherable.
The applicant, claiming that the use of the stylised drawing of a spider on surfboards constitutes an infringement of
its trade mark, alternatively a passing off of its trade mark, caused its attorneys to write a letter to the respondents
on 30 April 1996 (the date on which the first order was made final), referring to the said picture in Zigzag magazine
and demanding a written undertaking that the respondents would cease manufacturing, selling or dealing in any
surfboards containing the alleged infringing trade mark.
There followed an exchange of correspondence, some of which was written "without prejudice". Included in the
correspondence was a letter from the applicant's attorneys dated 2 May 1996 in which they complained that the
respondents were displaying on the exterior of the building from which they conduct business, a sign containing the
words "SPYDERBILT some boards some clothes". They required the respondents to delete the words "some
boards" from the sign forthwith. The words "some boards" were subsequently deleted. In the course of the said
correspondence the respondents, in a letter dated 7 May 1994, gave an undertaking not to use "its logo" (which I
understand
Page 321 of [1996] 4 All SA 316 (D)
to mean the stylised spider or spiders within an oval), in conjunction with the word "SURFBOARDS" and advised that
in future their surfboards would bear the name "JASON" which would serve to distinguish its boards "even further"
from those of the applicant. The applicant was not satisfied with this and advised that it was preparing an urgent
application in which costs would be claimed on an attorney and client scale. In fact it became apparent that it was
the respondents' intention to use the name "JARVIS", not "JASON". JARVIS, it is common cause, is the name of an
American surfboard shaper. He has used a spider device in conjunction with the name "SPYDER" for some time,
although for how long he has done so is in dispute in this application. The applicant also disputes the right to
Dennis Jarvis to use his mark or device "in the face of a prior registration by the applicant of its trade mark".
It is the applicant's contention, in this application, that: