I-Cat International Consulting & Trading (Pty) Limited Trading v Purpleglaze 3 (Pty) Limited Trading and another

• Jurisdiction: http://justis.com/jurisdiction/166,South Africa
• Judge: Phatshoane DJP
• Judgment Date: 05 May 2023
• Citation: 2023 JDR 1671 (NCK)
• Docket Number: 2069/2021

Phatshoane DJP:

[1]

The applicant, I-CAT International Consulting & Trading (Pty) Limited (I-CAT), approached this Court for an order substantially in the following terms and other contingent relief. That:

1.1

the second respondent, the Registrar of Trade Marks, rectify the Trade Marks' Register by expunging Purpleglaze's trade mark registration no. 2013/09782 E-CAT & EYE Device in class 42 from the Trade Marks Register.

1.2

the first respondent, Purpleglaze 3 (Pty) Limited trading as E-CAT (Purpleglaze), is interdicted and restrained:

1.2.1

in terms of s 34(1)(a) or (b) of the Trade Marks Act 194 of 1993 (the Act) from infringing eight specified I-CAT's registered trade marks in classes 1, 35 and 42.

1.2.2

in terms of the Counterfeit Goods Act 37 of 1997 (Counterfeit Goods Act) from manufacturing and or offering for sale counterfeit RDC and GreenBit dust suppression products.

1.2.3

from competing unlawfully with I-CAT by dealing in counterfeit goods bearing the trade marks RDC and GreenBit contrary to s 2(1) of the Counterfeit Goods Act.

1.2.4

from passing-off its dust suppression goods and services as those of I-CAT and or associated with the goods or services of I-CAT by using in any manner and or form the trade marks, names, domain names and or the trading style E-CAT and or the I-CAT EYE Logo and or any confusingly similar trade marks, names, domain names or trading styles in relation to dust suppression products or services.

1.2.5

in terms of s 24 of the Copyright Act 98 of 1978 (the Copyright Act) from infringing I-CAT's copyright in the artistic and literary works, by using or reproducing or adapting any of the said works or any substantial part thereof, in any manner or form.

1.2.6

for a period of six calendar months, from the date of the order, from unlawfully competing with I-CAT by manufacturing and or distributing and or offering for sale the range of dust suppression products that it currently manufactures and markets under the names DCP30 and BB60.

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1.3

in terms of s 10(1) (a) of the Counterfeit Goods Act, Purpleglaze deliver to I-CAT all counterfeit RDC and or GreenBit dust suppression products presently in its possession.

[2]

Few preliminary issues must be disposed of from the onset. First, is the late delivery of Purpleglaze's answering affidavit for which it sought condonation. I-CAT resisted the application for the late filing as it had afforded Purpleglaze four months' indulgence to serve and file its answering affidavit. Pursuant to this, when it refused to accede to Purpleglaze's further request to extend the period, Purpleglaze commenced settlement negotiations. This came to naught. Thereafter, approximately a further month passed prior to the filing of the answering affidavit. I-CAT argued that throughout the period of the delay Purpleglaze had been advising it that the answering affidavit was "practically complete" for purposes of service.

[3]

I-CAT further submitted that it has been economically imperilled by Purpleglaze's use of the E-CAT trade mark and logos as well as other works of copyright. This is so because in the dust suppression market, so it argued, it has not been published widely that the parties are not from the same stable. Thus, the risk of third parties mistakenly awarding bids to Purpleglaze, under the impression that they were dealing with I-CAT, would continue uninterruptedly.

[4]

Purpleglaze countered that it had been a tortuous task to find relevant supporting documents, that relates to the history of the engagements between the parties, in order to respond to the allegations made in the prolix founding papers. This required consultation with various people who are no longer in its employ. It also expended extensive effort to gather information spanning more than a decade (from 2008 to 2022) from its old records and those held by others. This was compounded by Covid-19 regulations which made travelling to meet witnesses impossible. Purpleglaze further submitted that its managing director, Mr Kobus Rossouw, who played a key role in the events to which this application relates and held institutional memory, passed away on 17 February 2021, some 8 months prior to the launching of the application by I-CAT on 06 October 2021. Purpleglaze further submits that the delay in filing the opposing

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papers was also partly occasioned by its bona fide attempt to curtail the proceedings and limit costs through a tender that it made to I-CAT.

[5]

In my view, the delay, although inordinate, has been adequately explained. The interest of justice, which is an overriding consideration, requires that all issues be ventilated and all the parties be given the opportunity to state their case as comprehensively as possible. [1] Both parties have had an untrammelled opportunity to ventilate the issues. The prejudice likely to be suffered by I-CAT is not of a degree that cannot be cured by an appropriate cost order, condonation should therefore succeed.

[6]

The Second preliminary issue that arises is an application by I-CAT to strikeout 37 paragraphs from Purpleglaze's answering affidavit and the supporting affidavit of Mr Andries Benjamin Mostert (Mostert) on the basis that they constitute inadmissible evidence and are scandalous, vexatious or irrelevant. The impugned paragraphs are: 21, 22, 25-26, 28, 29, 31, 35-38, 66, 88.2, 89.4, 90.1, 90.2, 90.5, 93.1 and 94.1 of the answering affidavit together with paras 22-29, 33, 35-40, 42-44 of the supporting affidavit.

[7]

It is trite that two requirements must be met before an application to strike out can succeed in terms of rule 6(15) of the uniform rules. First, the matter sought to be struck out must be scandalous, vexatious or irrelevant; and secondly, the court must be satisfied that if such a matter is not struck out the party seeking such relief would be prejudiced. [2] Relevance in striking out applications has to be tested with reference to the merits of the case. It does not follow that relevance depends on the factual merit of the impugned allegations. Whether the allegations are true or not is of no moment. What is of consequence is their relevance to the merits of the case. [3]

[8]

Some of the impugned paragraphs, in particular, paras 21, 22, 25-26, 28, 29, 31 and 33, seek to show that: (a) Purpleglaze had knowledge of dust suppression products prior to coming into contact with I-CAT; (b) that I-CAT's

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products are not unique in the market and further (c) seek to contest I-CAT's ownership of the intellectual property in respect of RDC and GreenBit products. I have difficulty in comprehending why these averments ought to be characterised as irrelevant. In my view, they strike at the heart of the application. Paragraphs 35 to 38 traverse issues which in Purpleglaze's view concerned the alleged repudiation of the supply agreement. This cannot be irrelevant. This conclusion equally applies to para 66 which is to the effect that the contractual relationship between the adversaries' spans more than a decade. The institutional knowledge had been lost following Mr Rossouw's passing. Purpleglaze was therefore required to consult former board members, employees and its competitors to gather the information. It is of little importance that in para 66 an allegation is being made that I-CAT deliberately misstated the historical facts. It is for it to rebut the allegation. At para 88.2 Mr Gerrit Thole, Purpleglaze's managing director and its deponent, merely denies that I-CAT is a world-leading supplier of dust suppression products. This cannot be classified as scandalous or irrelevant. So too, is para 89.4 which serves to illustrate Purpleglaze's relationship with Mamatwan mine.

[9]

I could also find nothing irrelevant in paras 90.1-90.2 and 90.5. They are to the effect that Mr Rossouw had an established network and business contacts with the mines and had performed some tests of the M3T product at Sishen. In para 93.1 Mr Thole states that the relationship between the rival traders in this case deteriorated as from 2017 when it dawned upon Purpleglaze that I-CAT was competing with it in the Northern Cape. The striking out of this averment is similarly unsustainable. It simply illustrates that the relationship went sour. As I see it, it remained for the parties to state and rebut what the cause of the disintegration in their relationship was.

[10]

At para 94.1 of the answering affidavit, an allegation is made that the mixing plant that I-CAT supplied to Purpleglaze had adhered to the latter's property. It is common cause that the issues that concerns the mixing plant are the subject of the arbitration proceedings and not before this Court for determination. Needless to say, I-CAT raised these issues in its founding papers. Purpleglaze was entitled to respond to them. Nothing turns on this.

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[11]

Purpleglaze opposed the striking out of paras 22-29,33,35-40, 42-44 of Mr Mostert's supporting affidavit on the basis that they amplify a case made out in its answering affidavit. Mr Mostert, it was contended, is a third party who had first-hand knowledge of the early days of I-CAT and Purpleglaze and their business relations. Without Mostert's affidavit, it was argued, Purpleglaze would not be able to adequately prove that I-CAT never owned the RDC intellectual property.

[12]

Some of the impugned paragraphs in the supporting affidavit are, in my view, pertinent to the issues raised in the papers, in particular, paras 33, 35 and 36. They convey that I-CAT does not own the RDC intellectual property. There are certain disputes of fact on the association between I-CAT and Mosmart, a company in which Mr Mostert was the CEO, particularly with regard to the proprietorship of certain...