Greengrass Productions Inc v You Can Win-Club CC

• Judge: Southwood J
• Judgment Date: 04 February 2009
• Citation: 2009 JDR 0055 (T)
• Docket Number: 40986/07
• Hearing Date: 18 November 2008
• Court: Transvaal Provincial Division

Southwood J:

[1]

In accordance with its Amended Notice of Motion the applicant seeks orders in terms of section 24(1) of the Trade Marks Act, 194 of 1993 ('the Act'), alternatively, sections 6 and 8 of the Promotion of Administrative Justice Act, 3 of 2000 (PAJA), to correct the register of trade marks in relation to trade mark number 2004/16148 EXTREME MAKEOVER logo in class 35 ('the trade mark') to reflect that the trade

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mark is a pending trade mark and not a registered trade mark, to reflect that the applicant for registration is You Can Win-Club CC (the first respondent), to amend the specification of goods to read as it did on the date when the application to register the trade mark was filed and to inform the applicant that he has done so, and further, to direct that the applicant's opposition to the registration of the trade mark may proceed. The applicant also seeks an order interdicting Alex Carlyle (the third respondent) from performing any further acts in relation to the trade mark in any capacity whatsoever and an order that Alex Carlyle and Leandro Gagiano (the fourth respondent) and the trustees of the Gagiano Family Trust (the 'Trust') pay the applicant's costs on the scale as between attorney and own client, jointly and severally, the one paying the other to be absolved. The application is opposed by the first respondent and the third and fourth respondents, in their capacities as trustees of the Trust. They will be referred to collectively as 'the respondents'. The first, third and fourth respondents contend that there are disputes of fact which cannot be resolved on the affidavits. The second respondent (the Registrar of Trade Marks) does not oppose the application.

[2]

The applicant seeks final relief on notice of motion and where there are disputes of fact in the affidavits final relief may be granted only in the circumstances outlined in Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 634D-635C. In general, final relief can be granted on notice of motion only if the facts alleged by the

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respondent together with the facts alleged by the applicant and admitted by the respondent, justify the grant of such relief. However final relief may also be granted 'if the respondent's version consists of bald or uncreditworthy denials, raises fictitious disputes of fact, is palpably implausible, far-fetched or so clearly untenable that the court is justified in rejecting them merely on the papers' – see National Director of Public Prosecutions v Zuma SCA Case Number 573/08 delivered 12 January 2009 para 26; Plascon-Evans Paints Ltd v Van Riebeeck Paints supra at 635A-C; Zuma v National Director of Public Prosecutions 2008 (2) SACR 421 (CC) para 8-10. As pointed out in National Director of Public Prosecutions v Zuma, supra, motion proceedings, unless concerned with interim relief, are concerned with the resolution of legal issues based on common cause facts. Obviously the facts cannot be common cause where there is a real, genuine and bona fide dispute of fact on an essential issue. In Wightman t/a JW Construction v Headfour (Pty) Ltd and Another 2008 (3) SA 371 (SCA) at para 13 the court said:

'A real, genuine and bona fide dispute of fact can exist only where the court is satisfied that the party who purports to raise the dispute has in his affidavit seriously and unambiguously addressed the facts said to be disputed. There will of course be instances where a bare denial meets the requirement because there is no other way open to the disputing party and nothing more can therefore be expected of him. But even that may not be sufficient if the fact averred lies purely within the knowledge of the averring party and no basis is laid for disputing the veracity or accuracy of the averment. When the facts averred

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are such that the disputing party must necessarily possess knowledge of them and be able to provide an answer (or countervailing evidence) if they be not true or accurate but, instead of doing so, rests his case on a bare or ambiguous denial the court will generally have difficulty in finding that the test is satisfied. I say "generally" because factual averments seldom stand apart from a broader matrix of circumstances all of which needs to be borne in mind when arriving at a decision. A litigant may not necessarily recognise or understand the nuances of a bare or general denial as against a real attempt to grapple with all relevant factual allegations made by the other party. But when he signs the answering affidavit, he commits himself to its contents, inadequate as they may be, and will only in exceptional circumstances be permitted to disavow them. There is thus a serious duty imposed upon a legal adviser who settles an answering affidavit to ascertain and engage with facts which his client disputes and to reflect such disputes fully and accurately in the answering affidavit. If that does not happen it should come as no surprise that the court takes a robust view of the matter.'

[3]

At the hearing on 18 November 2008 and pursuant to notices of application given by the applicant and by Alex Carlyle and Leandro Gagiano in their capacities as trustees of the Trust an order was made that Alex Carlyle and Leandro Gagiano in their personal capacities and in their capacities as trustees of the Trust were joined as the third and fourth respondents respectively.

[4]

On 18 November 2008 the court also ruled that the respondent's attorney would not be heard because of his failure to file heads of

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argument as required by this court's rules of practice. In terms of these rules, parties to opposed applications are required to file practice notes and heads of argument at the registrar's general office, before the roll closes in the week before the hearing. The object of these practice notes and heads of argument is obviously to assist the judge and the other parties to identify the factual and legal issues and prepare for the hearing. Failure to file the practice notes and heads of argument inconveniences the court and the other parties and is usually visited with a severe sanction: the court will postpone the hearing and order the offender to pay the wasted costs on the attorney and client scale. Problems can arise where only one party complies with the rule and wishes to proceed and the other party does not comply. The applicant's counsel filed a practice note and heads of argument but the respondent's attorney filed only a practice note. His practice note states simply that the respondents would seek the dismissal of the application with costs, 'due to the plethora of factual disputes'. No details were given. The respondents' attorney obviously thought he would be entitled to address the court despite not complying with the rules of practice. He could not explain why his heads of argument had not been filed and his correspondent was not available to furnish an explanation. He claimed that his correspondent had filed the heads of argument but it was pointed out to him that only the practice note was in the court file. Obviously neither the correspondent not the registrar's staff would have an interest in detaching the heads of argument from the practice note. Allowing a litigant to address the court in these

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circumstances would defeat the object of the rule. The court was also influenced by the manner in which the respondents had conducted the litigation. In this judgment I have considered all the affidavits in accordance with the Plascon-Evans principles.

[5]

The applicant's case for rectification of the trade marks register in terms of section 24(1) of the Act is that –

(1)

On 12 December 2006 the second respondent wrongly issued to the first respondent the certificate of registration in respect of the trade mark after the applicant, on 23 November 2006 and in terms of Regulation 52(1) of the Trade Mark Regulations, requested a three month extension of the term within which it could oppose the application. The respondents dispute that the applicant submitted to the second respondent the written request prescribed by Regulation 52(1). They contend that the second respondent was entitled to register the trade mark and issue the registration certificate.

(2)

On 4 September 2007 the first respondent wrongly sought and, on 6 September 2007, wrongly obtained changes in the trade mark register to reflect –

(i)

The name of the applicant for the trade mark as the Gagiano Family Trust; and

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(ii)

The specification of services in respect of which registration of the trade mark was sought as –

'Advertising: TV, Radio, Internet, Newspapers, Magazines and Billboards. Offering for sale and the sale of goods in the retail and wholesale trade. Business Management, administration and office functions. Compilation of information into computer databases and auditing'.

The applicant bases this part of its case on facts alleged by the first respondent.

[6]

For the relief sought in respect of the registration of the trade mark on 12 December 2006 the applicant relies on the provisions of section 21 of the Act read with Regulation 52(1) of the regulations. Section 21 provides that –

'Any interested person may, within three months from the date of the advertisement of an application in terms of section 17, or within such further time as the registrar may allow, oppose the application in the manner prescribed.'

Regulation 52(1) provides that –

'Any person interested in opposing a trade mark application may request the Registrar, on written request before the expiry of the term in which to enter opposition to the application in terms of

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section 21, not to issue the certificate of registration for a period of...