Passing off, Company and Domain Name Objections and Revocation of Registrations in South Africa
In late August 2015 the Western Cape High Court handed down a judgment which neatly sets out the principles of passing off and discusses some ancillary issues.
This is a good judgment which adequately discusses the issues surrounding passing off. The court also did a commendable job when addressing the secondary issues and this judgment can surely be consulted when referencing to passing off cases in the future.
Global Vitality Inc (the Applicant) is an American manufacturer, distributor and seller of dietary nutritional supplements under the trade mark Enzyme Process. Since 1988 these goods have been distributed worldwide through authorised agents.
The entity Enzyme Process CC was the authorised as the exclusive distributor and reseller of the goods in South Africa. The majority member of Enzyme Process CC registered Enzyme Process Africa (Pty) Ltd on 1 April 2003. The distributor proceeded to buy similar unbranded products elsewhere and sold them in South Africa under the Enzyme Process trade mark. Furthermore they registered the domain name: ensymeproces.co.za and applied for various trade marks, which are applied and used on the applicant’s products, to be registered in South Africa.
The Applicant cancelled the distribution agreement. Furthermore they brought this application seeking a final interdict on the basis of passing off, the cancellation of the trade mark registrations as well as the change of the company name and transfer of the domain name.
The court found that there had been passing off. The court rejected the respondent’s claim that the goodwill and reputation built up in the ENZYME PROCESS trade mark in South Africa is only as a consequence of the first respondent’s activities, and not that of the applicant.
Various trade mark registrations had been cancelled due to the first respondent having no bona fide claim to proprietorship. Furthermore the registrations were found to have been made in bad faith and they were contrary to the existing rights of the Applicant.
The judge found that the company name, Enzyme Process Africa, had to be changed as it is confusingly similar to the Applicant’s Enzyme Process trade mark and therefore falsely suggests an association between the two.
The court found the domain name, www.enzymeprocess.co.za, to constitute an abusive registration and ordered that it be transferred to the Applicant.