Clipsal Australia Pty Ltd and Others v GAP Distributors (Pty) Ltd and Others

• Jurisdiction: South Africa
• Judge: Joffe J
• Judgment Date: 23 October 2008
• Citation: 2009 (3) SA 305 (W)
• Docket Number: 08/01251
• Hearing Date: 23 October 2008
• Counsel: B du Plessis (with him E Botha) for the applicants. MM Jansen SC for the first, second and third respondents. No appearance for the fourth and fifth respondents.
• Court: Witwatersrand Local Division

Joffe J: G

[1] The applicants seek to enforce an order of this court (as replaced by an order of the Supreme Court of Appeal) and to obtain certain ancillary relief. The judgment of the Supreme Court of Appeal was handed down on 23 March 2007. It is reported as Clipsal Australia (Pty) Ltd and Another v Trust Electrical Wholesalers and H Another 2009 (3) SA 292 (SCA) ([2007] 4 All SA 1082).

[2] The enforcement is sought in the main by seeking an order that the first, second and third respondents are guilty of contempt of court, alternatively by declaring that the respondents' conduct constitutes a I breach of the order referred to above. The aforesaid order was made against two firms of which the present first respondent was the proprietor. It is accepted that the order was made against the first respondent. It is alleged that the second and third respondents are the alter ego of the first respondent and of each other.

[3] The fourth and fifth respondents were joined as respondents by the J other three respondents. They have played no role in this application.

Joffe J

A reference to the respondents will in the circumstances exclude the A fourth and fifth respondents.

[4] The conduct which forms the basis of the applicants' complaint is the importation and disposal of single and double electrical sockets as depicted in annexure MJ 6 and MJ 8.1 to the affidavit of one Jenkins. The applicants aver that in so doing the respondents breached the court B order aforementioned.

[5] At the commencement of the hearing of the application, counsel for the respondents argued in limine that the court should not entertain the application but should stay the hearing of the application until a review application pending in the Transvaal Provincial Division is determined. C The applicants' counsel argued that whilst the respondents were in contempt of an order of court no application by the respondents should be entertained. In order to appreciate the respective arguments it is necessary to traverse the relevant factual background.

[6] In the initial application which ultimately came before the Supreme D Court of Appeal on appeal to it, it was averred in the founding affidavit on behalf of the applicants therein that the first applicant is the proprietor of South African-registered design A96/0687. It is stated that the design was registered on 30 September 1996 and that the registered design is classified in class 13. A certified copy of the design registration E is attached to the affidavit of one Evans which in turn is annexed to the founding affidavit. This annexure consists of a certificate given under the signature of the Registrar of Patents. In para 7 of the certificate it is stated, inter alia, that:

The design registration is currently in force; F

A copy of the Form D1; D2; D6 and representations are attached hereto.

The form D1 is the application for the registration of the design. It appears ex facie that form that registration of the design is sought in class 13. The form D2 is entitled 'Register of Designs'. The form contains a G block in which indication must be given of the classification of the class in which registration occurred. The block is not completed and there is accordingly no indication of the classification. The form D6 is entitled 'Definitive Statement and Explanatory Statement' and indicates that registration occurred in class 13. These formal averments were not H placed in dispute by the respondents as cited in the initial application. In particular, none of the parties drew the attention of the court to the failure of the registrar to indicate in which class the design was registered.

[7] Based on these facts the Supreme Court of Appeal held in para 2 of the judgment that '(t)he design (A 96/0687) was registered under the I Designs Act 195 of 1993 as an aesthetic design in class 13, which covers equipment for the production, distribution or transformation of electricity'.

[8] After the Supreme Court of Appeal had handed down the judgment referred to above the first respondent in April 2007 applied to the J

Joffe J

A Constitutional Court for leave to appeal against the judgment and order. On 14 May 2007 the application for leave to appeal was dismissed.

[9] On 26 October 2007 the second respondent applied to the Transvaal Provincial Division for various orders relating to a constitutional challenge to the Designs Act 195 of 1993 (the Act). This application has B been stayed by agreement between the parties thereto pending the final determination of the present application.

[10] In October 2007 the respondents discovered the absence of a classification in the registration referred to above. The deponent to the answering affidavit in the present application states as follows in regard C thereto:

23.5

I deny that the registered design is in force on the basis that the Designs Register does not record any classifications of the registered design.

23.6

In this regard I point out that s 20(1) of the Designs Act, 1993, D states that:

'The effect of the registration of a design shall be to grant that the registered proprietor in the Republic, subject to the provisions of this Act, for the duration of the registration the right to exclude other persons from making, importing, using or disposing of any article included in the class in E which the design is registered and embodying the registered design or a design not substantially different from the registered design, so that he shall have and enjoy the whole profit and advantage accruing by reason of the registration.'

23.7

That the classification of the registered design has not been recorded in the Designs Register is evident from annexure MJ 5 F of Mr Jenkins' affidavit, which includes an extract of the Register of Designs (ie the Form D.2) which has been certified by the Registrar of Designs. A further copy of the extract of the Designs Register is annexed hereto marked 'BOT-4'. A certified extract of the Designs Register will also be made available at the hearing of this matter by my counsel, if necessary.

23.8

G Annexure MJ5 also includes certified copies of a Form D1 and a Form D6 on which the number '13' appears to have been inserted in manuscript. I am advised that the Form D1 and Form D6 are forms which are prescribed by the Regulations under the Designs Act which an applicant for a design registration is required to submit. I am advised, however, that the form D1 and the Form H D6 do not form part of the Designs Register.

23.9

The fact that the classification has not been recorded in the Designs Register was not raised by the first respondent during the Gap case since the issue had escaped its attention. This issue was not raised by any party during the Gap case, nor was the issue remarked upon or raised by any court during the Gap case.

I (The reference to the 'Gap case' is a reference to the initial application.)

[11] The applicants launched the present application on 16 January 2008. The respondents opposed the application and instituted a counter-application. The deponent to the...