Hollywood Curl (Pty) Ltd v Twins Products (Pty) Ltd (2)

• Jurisdiction: South Africa
• Judgment Date: 20 September 1988
• Citation: 1989 (1) SA 255 (A)

Hollywood Curl (Pty) Ltd v Twins Products (Pty) Ltd (2)
1989 (1) SA 255 (A)

1989 (1) SA p255

Citation	1989 (1) SA 255 (A)
Court	Appellate Division
Judge	Corbett JA, Smalberger JA, Milne JA, Kumleben JA, Nicholas AJA
Heard	August 22, 1988
Judgment	September 20, 1988

Flynote : Sleutelwoorde B

Company — Formation and constitution — Registration of name — Objection to in terms of s 45(2) of Companies Act 61 of 1973 — Right to object not linked to requirement that registration objected to in conflict C with provisions as to registration — When enacting s 45(2), Legislature appearing to have in mind damage caused to objector by reason of activities of company under name objected to — No warrant for limiting ambit of s 45(2) to comparison between company name of objector and company name to which objection taken — Damage could arise, for D example, by company being enabled through use of its name to pass off its goods or business as that of objector — In casu, no similarity between company name of objector and company name objected to — However, source of likely confusion or deception was series of names or marks E under which objector marketed its goods and company name objected to — Appeal Court upholding objection in terms of s 45(2) of Companies Act.

Headnote : Kopnota

The right of a third party to object to the name under which a company has been registered (conferred by s 45(2) of the Companies Act 61 of 1973) is no longer linked to the requirement that the F registration objected to was in conflict with the statutory provisions as to registration, as was the case under the Companies Act 46 of 1926. Section 45(2) speaks merely of the name objected to being 'calculated to cause damage to the objector'. It appears that what the Legislature had in mind was damage caused to the objector by reason of the activities of the company in question under the name objected to; and that such damage could arise, for example, by the company being enabled through or by reason of the use of its name to pass off its goods or its business G as that of the objector.

The appellant company had been incorporated in August 1984. An objection to the registration of the company name was lodged on behalf of the respondent and an associate company on the grounds that (1) in terms of s 45(1) of the Companies Act such registration was undesirable and (2) in terms of s 45(2) of the Act the name was likely to cause damage to the objectors. The Registrar of Companies was requested to order the appellant to change its name. The Registrar's refusal to do so was H set aside on application to a Provincial Division.

An appeal in a passing off action between the same parties was heard at the same time as the appellant's appeal from the decision of the Provincial Division upholding the respondent's objection to the registration of the appellant company's name. In the passing off appeal, the Court found that the evidence had established that the use by the appellant of the mark 'Hollywood Curl' on its merchandise constituted a passing off in that there was a reasonable likelihood that I ordinary members of the public might be confused or deceived into believing that such merchandise emanated from the respondent company (the respondent had, since the 1950's, marketed and distributed on a large scale a range of products under various names or marks, all such marks or names incorporating the word 'Hollywood'). It also found that the business conducted and/or services provided by the appellant under the 'Hollywood Curl' name amounted to a passing off vis a vis the J respondent. In the appeal concerning the registration of the appellant company's name,

1989 (1) SA p256

A Held (per Corbett JA, Smalberger JA and Milne JA concurring; Kumleben JA and Nicholas AJA dissenting), that, by parity of reasoning, the registration of the appellant under the name Hollywood Curl (Pty) Ltd was calculated to cause damage to the respondent in the aforementioned respects because of the anticipated and actual use of the Hollywood Curl name, both in relation to the business conducted by the appellant and/or the services provided, and in relation to the goods marketed by it.

B Held, further, that while it was true that as between the names of the parties, viz Twins Products (Pty) Ltd and Hollywood Curl (Pty) Ltd, there was no reasonable likelihood of confusion or deception, and that the source of likely confusion or deception was the series of names or marks, containing the word 'Hollywood', under which the respondent marketed its merchandise, there was no warrant for limiting the ambit of s 45(2) to a comparison between the company name of the objector and that of the company to whose name objection was taken.

C Held, accordingly, that the respondent had been entitled, in terms of s 45(2) of the Act, to object to the name under which the appellant had been registered. The appeal was accordingly dismissed.

The decision in the Transvaal Provincial Division in Twins Products (Pty) Ltd v Hollywood Curl (Pty) Ltd confirmed. D

Case Information

Appeal from a decision in the Transvaal Provincial Division (Ludorf J). The facts appear from the judgment of Corbett JA.

C E Puckrin SC (with him M M Jansen ) for the appellant referred to the following authorities: Link Estates (Pty) Ltd v Rink Estates (Pty) Ltd 1979 (2) SA 276 (E); Pivot Point SA (Pty) Ltd v Registrar of Companies and Another 1980 (4) SA 74 (T); Kredietbank van Suid-Afrika Bpk E v Registrateur van Maatskappye en Andere 1978 (2) SA 644 (W); Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers (Green Point) (Pty) Ltd 1976 (2) SA 930 (A); Slabbert v Airways Booking Office (Pty) Ltd 1933 WLD 204; Barclays Bank (DC and O) v Volkskas Bpk 1951 (4) SA 630 (W); (1979) South African Company Law Journal 'The Company Name' at B1 - B16.

F B R Southwood SC (with him P Ginsburg ) for the respondent referred to the following authorities: Twins Products (Pty) Ltd v Hollywood Curl (Pty) Ltd and Another 1986 (4) SA 392 (T); Henochsberg on The Companies Act 4th ed vol 1 at 78; Kredietbank van Suid-Afrika Bpk v Registrateur van Maatskappye en Andere 1978 (2) SA 644 (W); Link Estates (Pty) Ltd G v Rink Estates (Pty) Ltd 1979 (2) SA 276 (E); Pivot Point SA (Pty) Ltd v Registrar of Companies and Another 1980 (4) SA 74 (T); Brian Boswell Circus (Pty) Ltd and Another v Boswell-Wilkie Circus (Pty) Ltd 1985 (4) SA 466 (A); Old Apostolic Church of Africa v Non-White Old Apostolic Church of Africa 1975 (2) SA 684 (C); and Webster and Page South African Law of Trade Marks 3rd ed at 463 - 4. H

Cur adv vult.

Postea (September 30).

Judgment

Corbett JA:

This is the second appeal referred to in the judgment of this Court in the matter of Hollywood Curl (Pty) Ltd and I International Hollywood Curl Hairdressers Suppliers and Training Centre v Twins Products (Pty) Ltd (case No 282/87) [*] , which is to be delivered immediately before

1989 (1) SA p257

Corbett JA

A this judgment. The background facts in the present matter are to be found in the judgment in case No 282/87 and need not be repeated. I shall refer to the parties in this matter as 'Hollywood Curl' and 'Twins' respectively.

As indicated in the aforementioned judgment, Hollywood Curl was incorporated on 14 August 1984. On 18 February 1985 an attorney, Mr Salmon, of the firm John and Kernick, acting on instructions from B Twins and its sister company, Classique Products (Pty) Ltd ('Classique'), lodged with the Registrar of Companies ('the Registrar') an objection to the registration of the company name 'Hollywood Curl (Pty) Ltd'. The objection was raised on the grounds (i) that in terms of s 45(1) of the Companies Act 61 of 1973 ('the Act') such registration was undesirable and (ii) that in terms of s 45(2) of the Act the name C was likely to cause damage to Twins and Classique. The Registrar was accordingly requested to order Hollywood Curl to change its name. This objection was evidently referred by the Registrar to Hollywood Curl, for on 8 March the auditors of Hollywood Curl wrote to the Registrar indicating that, upon certain grounds, their client was not prepared to D change its name. A copy of this letter was sent by the Registrar to Mr Salmon for comment. Further correspondence passed between Mr Salmon and the Registrar and eventually on 9 August 1985 the Registrar notified him that he (the Registrar) was not prepared to make the order requested; and subsequently, upon request, he furnished written reasons for E his decision. Thereafter and in terms of s 48 of the Act Twins applied on notice of motion, citing Hollywood Curl and the Registrar, for an order with costs setting aside the Registrar's decision and directing Hollywood Curl to change its name within a period to be fixed by the Court. The application was opposed by Hollywood Curl, but not by F the Registrar, against whom no order for costs was sought.

As I have said, the two matters were heard together. In regard to the application with which this appeal is concerned the Judge of first instance granted the application with costs as against Hollywood Curl (such costs to include the costs of two counsel) and ordered G Hollywood Curl to change its name forthwith. Hollywood Curl now appeals to this Court (with leave of the Court a quo ) against the whole of the judgment and order of the Court a quo.

Section 45 deals generally with the power of the Registrar to order a company to change its name, translated name, changed name or H shortened form of name. As we are here concerned with a company name as originally reflected in its memorandum of association, I shall omit reference to these other forms of name. Accordingly, the relevant portions of s 45 read as follows:

'45. (1) If within a period of one year after the registration of I any memorandum... it appears that the name...