Account Works Software (Pty) Limited v Orange Personal Communication Services Limited

• Jurisdiction: South Africa
• Judge: Tuwe, AN
• Court: Registrar of Trade Marks
• Docket Number: 2006/05687

Tuwe AN:

The Applicant for registration is Account Works Software (Pty) Limited (formally known as Orangeworks Software (Pty) Ltd), a South African company having its registered office at Office No. 2, Bentley Office Park, Corner Wessels & Rivonia Road, Rivonia, Gauteng (hereinafter referred to as "the Applicant"). The Applicant has applied to register trade mark no. 2006/05687 ORANGEWORKS in class 9 in respect of:

"Computer software and software programmes relating to accounting".

The application is being opposed by Orange Personal Communication Services Limited, a United Kingdom company having its principal place of business at St James Court, Great Park Road, Almondsbury Park, Bradleystoke, Bristol, United Kingdom (hereinafter referred to as "the Opponent"). The Opponent is the Applicant for registration of trade mark no. 2005/16116 ORANGE in class 9 in respect of:

"Electrical and electronic communications and telecommunication apparatus and instruments, communication and telecommunications apparatus and instrument, electrical and electronic apparatus and instruments all for processing, logging, storing, transmission, retrieval or reception of data, apparatus and instruments for recording, transmission, amplifying or reproduction of sound, images, information or encoded data, photographic apparatus, instruments and equipment, image processing apparatus, instruments and equipment, television apparatus and instruments, telecommunication, radio and television broadcasting, transmitters and receivers, apparatus for access to broadcast or

2015 JDR 2400 p3

Tuwe AN

transmitted programs, holograms, computers, peripheral equipment for computers, programmed data carrying electronic circuits, computer programs, computer software, discs, tapes and wires all being data magnetic carriers, blank and pre-recorded magnetic cards, smart cards containing micro processors, integrated circuit cards, electronic identification cards, telephone cards, telephone credit cards, credit cards, debit cards, cards for electronic games designed for use with telephones, CD ROMS, magnetic, digital and optical data carriers, magnetic, digital and optical data recording and storage media (blank and pre-recorded), computer software supplied from the internet, electronic publications (downloadable) provided on-fine from computer database or the internet, computer software and telecommunication apparatus (including modems) to enable connection to databases, local area networks and the internet, computer software to enable teleconferencing, video conferencing and video phone services, computer software to enable searching and retrieval of data, computer software for accessing databases, telecommunication services, computer networks and electronic bulletin boards, computer games software, digital music (downloadable) provided from a computer database or the internet, digital music (downloadable) provided from MP3 internet websites, devices for playing music received from the internet, MP3 players, satellite transmitters and receivers, telecommunication and

2015 JDR 2400 p4

Tuwe AN

broadcasting satellites, radio telephone beacons and telephone masts, electric wires and cables, optical cables, resistance wires, electrodes, telecommunications systems and installations, terminals for telephone networks, telephone switchboards, telecommunications signal input, storage, conversion and processing apparatus, telephone equipment, equipment for fixed, transportable, mobile, hands-free or voice-activated telephones, multimedia terminals, interactive terminals for displaying and ordering goods and services, paging, radio paging and radio-telephone apparatus and instruments, telephones, mobile telephones and telephone handsets, facsimile machines, accessories for telephones and telephone handsets, adaptors for use with telephones, battery chargers for use with telephones, desk or car mounted units incorporating a loud speaker to allow a telephone handset to be used hands-free, in-car telephone cradles, bags and cases specially adapted for holding portable telephones and telephone equipment and accessories, computerised personal organisers, aerials, batteries, micro processors, keyboards, modems, calculators, display screens, electronic global positioning systems, electronic navigational, tracking and positioning apparatus and instruments, monitoring (other than in-vivo monitoring) apparatus and instruments, radio apparatus and instruments, electrical control, testing (other than in-vivo testing), signalling, tracking (supervision) and tethering

2015 JDR 2400 p5

Tuwe AN

apparatus and instruments, optical and electro-optical apparatus and instruction, video films, audio-visual apparatus and equipment, electronic games equipment and apparatus, electrical and electronic accessories and peripheral equipment designed and adapted for use with computers, audio-visual apparatus and electronic games equipment and apparatus, parts and fittings for all the aforesaid goods."

A POINT IN LIMINE

The Applicant lodged two applications to strike out, which were argued at the beginning of the hearing. The first was an application that certain portions of the affidavit of Ms Rachel Deborah Ann Mars be struck out from the records, on the basis that it constituted new or irrelevant evidence. The second application sought to strike out the supplementary replying affidavit in the name of Mr Christopher Karl Job, also on the basis that it constituted new or irrelevant evidence.

The Opponent's two applications to strike out should not be successful in that there were issues raised therein by the Applicant which formed part of the record presented to the Registrar and to which the Opponent had responded. The Applicant alleged that...