Better Homes Expo (Pty) Ltd v Consep Home Ideas (Pty) Ltd

• Jurisdiction: South Africa
• Judge: PA Meyer J
• Judgment Date: 07 February 2019
• Docket Number: 48170/17
• Court: Gauteng Local Division, Johannesburg
• Hearing Date: 06 December 2018
• Citation: 2019 JDR 0220 (GJ)

Meyer J:

[1]

The applicant, Better Homes Expo (Pty) Ltd trading as HOME IDEAS (Better Homes), seeks an interdict against the eight respondents - Consep Home Ideas (Pty) Ltd, Consep Home Ideas West Rand (Pty) Ltd, Consep Home Ideas Centurion (Pty) Ltd, Consep Home Ideas Pretoria East (Pty) Ltd, Consep Home Ideas Bryanston (Pty) Ltd, Consep Group (Pty) Ltd, the sole director of the first to third respondents, Mr Nicholas Van der List, and the sole director of the fourth to sixth respondents, Mr Theodorus Jacobus Van der List, respectively (collectively referred to as 'Consep') – preventing them from operating under the name CONSEP HOME IDEAS and thereby passing off their business as being connected or associated with Better Homes, which uses the phrase HOME IDEAS in designating its business.

[2]

The business of Better Homes is to operate a permanent exhibition centre and a website where other businesses (from the home improvement and renovation industry) market their goods and services to the public. Better Homes attracts the patronage of two distinct groups of customers; those offering goods and services in the home improvement and renovation industry and those seeking to acquire such goods or services. Although Better Homes only filed an application for the registration of the trademark HOME IDEAS on 10 June 2016 (the application is still pending), it has indisputably been making extensive use of the phrase HOME IDEAS since October 2005, when it commenced operating its exhibition centre – HOME IDEAS CENTRE. It is a permanent exhibition centre where hundreds of products from a hundred or more exhibitors are on daily display. Until February 2014, Better Homes also published its own magazine wherein the services and products of the exhibitors at the exhibition centre were promoted. As a result of the success of its HOME IDEAS CENTRE, it registered another company - Home Ideas Online (Pty) Ltd - in March 2013, which company launched an online marketing platform for exhibitors to market their products and services on display at the HOME IDEAS CENTRE, also online. In March 2015, it 'took a strategic decision to combine the

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two companies under the registered company Better Homes Expo (Pty) Ltd t/a HOME IDEAS' (the applicant).

[3]

The first respondent, Consep Home Ideas (Pty) Ltd, was registered as a company on 11 July 2016. The other Consep Home Ideas companies (the second to sixth respondents) were registered during the period 12 July 2016 to 31 January 2017. Towards the middle of June 2016, Better Homes objected to the use by Consep of the phrase HOME IDEAS in designating its business. In a letter from its attorneys, dated 19 July 2016, Consep gave the following undertaking:

'Our clients agree and undertake not to use the words Home Ideas in isolation but reserve the right to use the words "Consep Home Ideas" as per the registered names of two of the group companies on its own or in combination with other words.'

The undertaking was not acceptable to Better Homes, and it instituted the present application almost 17 months later, on 8 December 2017.

[4]

The managing director of Better Homes, Mr Steve McAlpine, states in its founding affidavit:

'The Seventh and Eighth Respondents [Messrs Nicholas and Theodorus Van der List], via their respective entities, were thus clearly targeting home improvement and renovation exhibitors and suppliers (most of whom were our clients) at that time, and they were doing so either under entity names incorporating the Applicant's trade marks, and/or by using the Applicant's trade marks as part of its marketing.'

In answer, Mr Theodorus Van der List, on behalf of Consep, states:

'It has never been the Respondents' intention to target home improvement and renovation exhibitors. Rather, the Respondents have been in the business of property development for a significant period of time. As a change of stance, it was decided to establish and set up exhibition centres throughout the Republic inviting contractors to display their product, which contractors would be offered development opportunities through Consep's development arm. It is not now and never has been the Respondents' intention to compete with Home Ideas. In so far as they are concerned, the markets are very different and the concepts to which such markets relate are substantially different too.'

[5]

Consep thus alleges that it operates exhibition centres allowing exhibitors to display their products with the objective of obtaining business through Consep's development arm. The allegation, however, is entirely inconsistent with the marketing material distributed by Consep. On its website it describes its business thus: 'Consep Home Ideas has made it possible to find the supplier or product for

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your home improvement and renovation project at one convenient location!' On its Facebook page it displays advertisements describing its services as 'Hundreds of EXHIBITORS displaying everything needed to improve your home UNDER ONE ROOF' and 'House Construction + Renovation Showroom'. I accept, therefore, that Consep and Better Homes carry on business in a common field of activity.

[6]

The name and logo which Better Homes display at its exhibition centre and on many of its marketing items and other documents depicted in the papers resemble a simple image of a house. The words HOME IDEAS in bold capital letters and in blue (or in white when it appears on a blue background), are configured below each other in such a way as to resemble the brick and mortar part of a house with two painted red brush strokes at angles above them to resemble the roof and chimney. Together they resemble a simple image of a house. In the case of its HOME IDEAS CENTRE the word CENTRE appears below the word IDEAS also in bold capital letters and in a smaller font as part of the depiction of a house. The get-up of Consep's trade name, on the other hand, is the words CONSEP HOME IDEAS with or without a separate logo, which is a 3D multi-coloured drawing of a house with walls, a door, windows, roof and chimney, including a loft room. The drawing does not incorporate its trading name.

[7]

As was said by Wallis JA in Pioneer Foods (Pty) Ltd v Bothaville Milling (Pty) Ltd 2014 BIP 486 (SCA) para 76,

'. . . [p]assing off occurs when A represents, whether or not deliberately or intentionally, that its business, goods or services are those of B or are associated therewith. It is established when there is a reasonable likelihood that members of the public in the marketplace looking for that type of business, goods or services may be confused into believing that the business, goods or services of A are those of B or are associated with those of B. The misrepresentation on which it depends involves deception of the public in regard to trade source or business connection and enables the offender to trade upon and benefit from the reputation of its competitor. Misrepresentations of this kind can be committed only in relation to a business that has established a reputation for itself or the goods and services it supplies in the market and thereby infringe upon the reputational element of the goodwill of that business. Accordingly proof of passing off requires proof of reputation, misrepresentation and damage. The latter two tend to go hand in hand, in that, if there is a likelihood of confusion or deception, there is usually a likelihood of damage flowing from that.

(Footnotes omitted.)

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[8]

Consep resists the relief claimed by Better Homes on the grounds that the...