Abdulhay M Mayet Group (Pty) Ltd v Renasa Insurance Co Ltd and Another

• Jurisdiction: South Africa
• Judge: van Dijkhorst J
• Judgment Date: 21 July 1999
• Counsel: P Ginsburg SC (with him R Michau) for the applicant. L G Bowman SC (with him J N Cullabine) for the respondents.
• Hearing Date: 17 June 1999
• Court: Transvaal Provincial Division
• Docket Number: 21447/98

Van Dijkhorst J:

The applicant instituted proceedings against the first and second respondents by way of application. It initially sought to attach property owned by the second respondent to found or confirm jurisdiction and then to sue by way F of edictal citation, but, as the second respondent consented to the jurisdiction of this Court, this part of the application became redundant.

The applicant is the registered proprietor in the Republic of South Africa of trade mark registration No 94/12324 for the trade mark 'Reliance Insurance Brokers' (the registered trade mark) in terms of G the provisions of the Trade Marks Act 194 of 1993 (the Act).%The applicant sought a final, alternatively interim, interdict restraining the respondents from infringing the registered trade mark in terms of the provisions of s 34(1)(a), (b) and (c) of the Act and an interim, alternatively final, interdict restraining the respondents from passing off their services as and for those of the applicant by using H the trade marks 'reliance' or 'reliance group holdings company' in any manner. At the hearing the applicant no longer prayed for interim relief but moved for a final order and did not seek relief in terms of s 34(1)(c) of the Act.

The first respondent is Renasa Insurance Co Ltd, a South African company with registered address at Reliance National House, 23 Impala Road, Chislehurston, Sandton, Johannesburg. It conducts business as short term insurance underwriters. I

The second respondent, Reliance National Insurance Co (Europe) Ltd, is a company organised and existing under the Companies Act of the United Kingdom and having its principal place of business at Reliance National House, 80 Leadenhall Street, London, United King- J

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dom. It conducts business as a general insurer and re-insurer. The A second respondent was originally incorporated under the name San Francisco Insurance Co (UK) Ltd and thereafter underwent various changes of name. On 1 March 1991 its name was changed to Reliance National Insurance Co (UK) Ltd. Ultimately, on 30 September 1996, its name was changed to its present name.

The first respondent is a wholly owned subsidiary of the second B respondent. Both the first and second respondents are members of an international group of companies headed by Reliance Group Holdings Inc, a United States corporation having its principal place of business in New York. I will refer to this company as Reliance Group Holdings. It is common cause that its insurance division is well-known C internationally.

The applicant trades (through one of its divisions) as Reliance Insurance Brokers and conducts business as, inter alia, short term insurance brokers. It has used either the trading style Reliance Insurance Brokers or Reliance Insurance Agency since at least 1980.

The applicant became the registered proprietor of trade mark No D 94/12324, 'Reliance Insurance Brokers', in class 36 with effect from 10 November 1994. The registration covers, inter alia, insurance, re-insurance and brokerage services. The applicant made use of the trade mark 'Reliance Insurance Agency' from 1980 to 1987 and has used the trade mark 'Reliance Insurance Brokers' from 1987. Such use has been in respect of short term insurance broking services. E

The applicant's trade mark is registered subject to a disclaimer of the words 'insurance' and 'brokers'. Accordingly, it is submitted on its behalf that the distinctive portion or the dominant feature of the applicant's trade mark is the word 'reliance' and that where F disclaimed features are common to the trade or are commonplace and of a non-distinctive character, full effect should be given to the disclaimer and less emphasis should be placed on such disclaimed features. As authority for this proposition reliance is placed on Smithkline Beecham Consumer Brands (Pty) Ltd (formerly known as Beecham South Africa (Pty) Ltd) v Unilever plc 1995 (2) SA 903 (A) at 912H - I. G

On behalf of the respondents, on the other hand, it was emphasised that insofar as trade mark infringement is concerned the registered trade mark is 'Reliance Insurance Brokers'. They argue that there are a very large number of parties in the insurance and financial field bearing registered names and/or using the trade marks 'reliance' or 'reliant' in conjunction with other matter. It does not avail the applicant to contend that the registered trade mark is in the work 'reliance'. It consists of the words 'reliance insurance brokers'. H

The relevant facts are as follows. The stationery of the first respondent reflects that it is 'a Reliance Group Holdings Company' which has its address at 'Reliance National House'. Form CM22 filed by the first respondent with the Registrar of Companies I on 1 June 1988 also reflects its registered address as Reliance National House. The first respondent contends that the reference to 'Reliance National House' in its registered address was in anticipation of the building it occupies being called 'Reliance National House'. It further states in its answering affidavit that it will, when printing fresh letterheads and business cards, omit any J

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reference to 'Reliance National House'. It states that the building A has not been given that name and that the reference to the name in its address as reflected in the printed matter has been changed.

The fact is, however, that more than six months after the signing of the answering affidavit no attempt has been made to remove the reference of 'Reliance National House' from the first respondent's B stationery. In the records of the Registrar of Companies the registered address of the first respondent is still reflected as being 'Reliance National House'. No attempt has been made to change it.

The first respondent is distributing to the general public promotional material in which the trade mark 'reliance' is used. This C material was obtained by an investigator from the first respondent pursuant to a request 'for information on the first respondent'. It consists of the business card of the chief executive of the first respondent which prominently states that the first respondent is 'a Reliance Group Holdings Company' of 'Reliance National House' and some 51 pages of documentation on the second respondent D (referred to as 'Reliance National' a 'Reliance Group Holdings Company' trading in South Africa under the name 'Renasa Insurance Co Ltd') and its parent group Reliance Group Holdings Inc of New York.

The second respondent has been distributing to insurance companies in South Africa its business cards in order to solicit E business in South Africa. Such business cards use the words 'a Reliance Group Holdings Company' as well as its former name being 'Reliance National Insurance Co (UK) Ltd'.

The second respondent, upon the applicant's demand, has not given an undertaking that it will not use the trade mark 'reliance' F in the course of trade in South Africa in the future. What the second respondent states is that it has 'ceased all direct business operations . . . in South Africa, since the commencement of operations of the first respondent'.

The second respondent alleges that its business activities in South Africa during the period 1 October 1991 to the end of 1997 G featured the trade mark 'reliance' prominently in securing and finalising transactions. Such business was allegedly placed with the second respondent primarily by South African insurance brokers who it is alleged knew the trade mark 'reliance'. The second respondent's evidence is to the effect that it has written business 'in South Africa' during the period 1991 to 1997.

In the circumstances it is submitted on the applicant's behalf that H the applicant is justified in seeking relief against the second respondent both for trade mark infringement and passing off on the basis that it continues to use the trade mark 'reliance' in South Africa, albeit on an allegedly 'indirect'...