Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers (Green Point) (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Friedman AJ
• Judgment Date: 02 November 1973
• Court: Cape Provincial Division

Friedman, A.J.:

Applicant is a company which carries on a steakhouse business at 4, Burnside Road, Tamboers Kloof, under the name Bar - B - Que Steakhouse. On the outside of the premises where it conducts its business applicant has a neon A sign depicting the name "Bar - B - Que Steakhouse" in red lettering. The letters which constitute the word "Bar - B - Que" which appears above the word "Steakhouse" are superimposed upon a white "sosatie" on a skewer. These letters are not of a uniform size and do not all slope the same way. They are moreover arranged in such a way that in the first syllable a portion of the letter "B" overlaps a portion of the letter "A", B which in turn overlaps portion of the letter "R", and in the last syllable the letter "Q" overlaps a portion of the letter "U" which in turn overlaps a portion of the letter "E". In April, 1973, respondent opened a steakhouse business at the corner of Glengariff and Main Roads, Sea Point, which is also called "Bar - B - Que Steakhouse". On the outside of the C premises at which it conducts its business, respondent has caused to be erected a neon sign which is to all intents and purposes identical to applicant's; in fact the only difference between the two signs is that whereas in applicant's the word "Steakhouse" is in red capitals, in respondent's that word is in black capitals.

D Applicant's managing director, one J.J. du Preez, who has deposed to the founding affidavit filed by applicant in support of its notice of motion, alleges that applicant has under his management conducted its business under the name "Bar - B - Que Steakhouse" since 1970 and that it has since that date used the neon sign described above as its nameboard. He says that E this name-board and its design have become known to and have achieved popularity amongst the public as an advertisement for and as a symbol of applicant's steakhouse business. Du Preez complains that the copying by respondent of applicant's name and neon sign, for which applicant has not given its consent, is calculated to confuse the public and to create the F impression either that there is a connection between respondent's steakhouse business and that of applicant, or that respondent's steakhouse business is in fact applicant's.

On 9th August, 1973, applicant through its attorneys addressed aletter to respondent demanding that respondent cease to use the name "Bar - B - Que Steakhouse" in connection with its business and that respondent remove its neon sign, but G respondent has refused to comply with these demands. On 30th August, 1973, applicant applied on notice of motion, as a matter of urgency, for an interdict restraining respondent from using the word "Bar - B - Que" and the offending name-board in connection with its Sea Point steakhouse, and for an order prohibiting respondent from using or copying the name "Bar - B H - Que" and/or the design appearing on applicant's neon sign, in connection with any other steakhouse restaurant which respondent might conduct in the future.

In an opposing affidavit filed on behalf of respondent shortly before the matter was called, it was contended that respondent had had insufficient time within which to deal with the application. Both parties were represented by counsel, and by consent the matter was postponed to a date to be fixed by the Registrar and respondent was given leave to amplify its opposing affidavit, which it did in the form of a supplementary

Friedman AJ

affidavit, and the question of costs was ordered to stand over for determination at the next hearing.

Respondent's opposing affidavits raise two main defences. Firstly, respondent denies that its use of the name "Bar - B - Que Steakhouse" or the design on its name-board amounts to a A passing-off by it of its business as that of applicant's or even as being connected with applicant's business. Secondly, respondent contends that applicant has acquiesced in the use by respondent of the name and design in question and is estopped from objecting thereto.

As the facts deposed to in the various affidavits are not all common cause it is necessary, in determining the present B dispute, to apply the test enunciated by VAN WYK, J. (as he then was), in Stellenbosch Farmers' Winery Ltd. v Stellenvale Winery (Pty.) Ltd., 1957 (4) SA 234 (C) at p. 235, as follows:

"It seems to me that where there is a dispute as to the facts a final interdict should only be granted in notice of motion C proceedings if the facts as stated by the respondents together with the admitted facts in the applicant's affidavits justify such an order...

Where it is clear that facts, although not formally admitted cannot be denied, they must be regarded as admitted. The arguments, submissions and opinions contained in the aforesaid affidavits are of course not facts, and will not be regarded as such."

I proceed now to analyse the facts and to apply the D aforementioned test.

Although du Preez deals with the manner in which applicant has conducted its business since 1970, it is common cause that applicant commenced business under the name "Bar - B - Que Steakhouse" as far back as 6th September, 1966. At that time one Hans Stahr, who is now a director and in control of the E respondent, was the manager of applicant's business and held 25 per cent of the issued shares in the applicant. While so associated with applicant, Stahr caused the neon sign which applicant still uses, and which it complains respondent has copied, to be designed and erected. On 4th March, 1970, Stahr, who had by then acquired control of the entire issued share F capital of applicant, sold his shares and loan account in the applicant to du Preez for R35 000. The deed of sale contained a bar clause in terms of which Stahr was prohibited for a period of three years from carrying on or being interested in a steakhouse business without du Preez' written consent, within a radius of six miles from the "Bar - B - Que Steakhouse" conducted by applicant in Tamboers Kloof.

G In November, 1967, i.e. at a time when Stahr was still in control of applicant, he commenced a steakhouse business at Bellville which he called "Bar - B - Que Steakhouse", and which has at all times had a neon sign identical in all respects to applicant's. The Bellville business, which is now H under different management, is still being conducted under the same name and with the same neon sign.

In November, 1970, i.e. a few months after he had disposed of his interest in the applicant, Stahr - through a company called Aitchess Caterers (Pty.) Ltd - commenced another steakhouse business at Parow. That business has also, up to the present time, been called "Bar - B - Que Steakhouse", and has had a neon sign identical to the one used by respondent in Sea Point.

Friedman AJ

At all these businesses i.e. at Bellville, Parow, Sea Point and Tamboers Kloof, the same cash slips are used. These have the words "Bar - B - Que Steakhouse" printed on them in the same lettering as that used in the neon signs and with a skewer A running horizontally through the word "Bar - B - Que". All these businesses use menu holders with the words "Bar - B - Que Steakhouse" printed on them. They also apparently use crockery which has the logo "Bar - B - Que" embossed on it.

In 1972 a company called Rouwkoop Caterers (Pty.) Ltd., in which du Preez and his co-director and shareholder in the applicant hold a 50 per cent interest, opened a steakhouse B business in Rondebosch under the name "Bar - B - Que Steakhouse". According to du Preez, he and his co-director in the applicant consented to Rouwkoop Caterers (Pty.) Ltd. using the name "Bar - B - Que Steakhouse" in Rondebosch, with the intention of indicating to the public that there was in fact a connection between applicant's steakhouse and the one in Rondebosch.

C In regard to the commencement of respondent's business at Sea Point, Stahr states that in October, 1972 when he formulated the idea of opening a steakhouse to be known as the "Bar - B - Que Steakhouse" at Sea Point, he approached du Preez, with whom he has at all relevant times been on a friendly footing, and requested that du Preez release him from the operation of D the bar clause. Du Preez was not averse to giving the necessary consent, but required in return an undertaking that Stahr would not, for a period of five years, "open any further 'Bar - B - Que steakhouse' in Cape Town". As Stahr was not agreeable to such a condition, he decided to abide by the bar clause. He says that the term "Bar - B - Que Steakhouse" was E specifically used by himself and du Preez during these negotiations. This is denied by du Preez but for the purposes of this judgment I must accept Stahr's version.

Respondent commenced business at Sea Point on 19th March, 1973. On numerous occasions prior to this date, according to Stahr, du Preez visited him there and observed the fitting out of the premises. Although he was well aware that Stahr intended F to trade under the style of "Bar - B - Que Steakhouse", du Preez raised no objection. Two days prior to the opening night du Preez and his partner in the Rondebosch "Bar - B - Que Steakhouse", visited Stahr and du Preez signed a R1 - note which he affixed to a pillar in respondent's steakhouse as a gesture of good luck. By then the neon sign had already been G erected and the signwriting on the plate glass window, consisting of the words "Hans's Bar - B - Que" (the logo of the word "Bar - B - Que" being the same as that in the neon sign save for the omission of the "sosatie") had already been completed. The crockery bearing the "Bar - B - Que" logo was on display and so were the menus. On the opening night du Preez attended the restaurant as Stahr's guest and on that occasion H used both the crockery and the menus. On "at least twenty occasions" subsequent to the opening night, du Preez visited Stahr at respondent's...