Miriam Glick Trading (Pty) Ltd v Clicks Stores (Transvaal) (Pty) Ltd and Others

• Jurisdiction: South Africa
• Judge: Coetzee J, Eloff J and Botha J
• Judgment Date: 15 December 1977
• Court: Transvaal Provincial Division
• Hearing Date: 08 November 1977
• Citation: 1979 (2) SA 290 (T)

Miriam Glick Trading (Pty) Ltd v Clicks Stores (Transvaal) (Pty) Ltd and Others
1979 (2) SA 290 (T)

1979 (2) SA p290

Citation	1979 (2) SA 290 (T)
Court	Transvaal Provincial Division
Judge	Coetzee J, Eloff J and Botha J
Heard	November 8, 1977
Judgment	December 15, 1977

Flynote : Sleutelwoorde

Trade and trade mark — Trade — Passing-off application — Similarity of H "Click" and "Glick" — Glick, however, the surname of persons founding business — Virtually no common field of activities between the two businesses — No customer evidence to establish actual confusion — Application should not have been granted — Set aside on appeal.

Headnote : Kopnota

The Court on appeal reversed the decision of a single Judge granting an order in a passing-off application brought by the respondents against the appellant where it appeared, inter alia, that, despite the similarity of the names "Click" and "Glick" (the latter being the surname of those who originally founded the respondents' business), there was virtually no common field of activities between the two,

1979 (2) SA p291

there being a vast difference between the nature of the goods mainly dealt in by the respondents as contrasted with the furniture mainly dealt in by the appellant, as also in the manner in which their businesses were run. In addition there was no customer evidence to establish actual confusion. The appeal Court therefore held that it had not been established with A sufficient cogency that there was a likelihood of confusion and that the order which had in fact been granted should not have been issued. B

Case Information

Appeal from a decision of MYBURGH J. The facts appear from the reasons for judgment.

M E King SC (with him D V Duke) for the appellant.

N S Page SC (with him N A Braithwaite) for the respondents.

Cur adv vult.

Postea (December 15). C

Judgment

Eloff J:

The present is an appeal against an order granted by MYBURGH J in a passing-off application, brought by respondents against the appellant. The order was one restraining the appellant from passing-off its business as and for that of respondents, or as being connected in the course of D trade with that of respondents, and granting ancillary relief.

The respondents are twelve associated companies described in the founding affidavit as members of the Clicks Group. The first of these companies was registered and its business established in Cape Town in August 1968. By the creation of new companies and the setting up of new stores the group from time to time thereafter expanded its activities to various parts of E the Cape Province and Natal. October 1972 saw the establishment of the first Clicks Store in Pritchard Street, Johannesburg, followed in May 1974 by the setting up of a Clicks Store in Jeppe Street, Johannesburg. At present the group conducts 14 stores in the Cape Province, four in Natal and two in Johannesburg.

F At the time when the first Clicks Store was opened in Johannesburg there was a store at 123 Kerk Street, Johannesburg, owned and conducted by a partnership operated by Paul and Miriam Glick under the style of Glicks. They dealt in furniture, electrical appliances and photographic equipment. G That business was established in May 1970. In October 1970 the partnership opened a second shop in Kerk Street, Johannesburg. In the next year on 11 November 1971 the partnership caused a company styled Paul Glick Enterprises (Pty) Ltd to be registered, which took over and continued the two Glick businesses. In November 1972 the Frymer-Moshal group of companies acquired a majority shareholding in Paul Glick Enterprises (Pty) Ltd and in January 1973 further Glick Stores were opened at Kerk Street, H Johannesburg, and at 154 Market Street, Johannesburg, fairly close by to the Clicks Store in Pritchard Street. Again in June 1973 it opened a store styled "Glicks Photographics" in Eloff Street, and "Glicks Furniture Shop" at 125 Pritchard Street, Johannesburg.

Towards the latter part of 1972 the Frymer-Moshal group acquired the entire shareholding in Paul Glick Enterprises (Pty) Ltd and in April 1974 Paul and Miriam Glick resigned as its directors. In April 1974 Paul

1979 (2) SA p292

Eloff J

and Miriam Glick opened a store in Bree Street styled "Glicks Bree Street". In May 1974 they caused a new company to be registered styled "Miriam Glick Trading (Pty) Ltd" - the present appellant. This company A took over the new businesses started by the partnership, as well as a further Glick store which was opened in Jeppe Street.

Paul Glick Enterprises (Pty) Ltd was in July 1975 placed under provisional liquidation, but a scheme of arrangement in respect of it was sanctioned, and it disappeared from the scene as a user of the name Glicks. The name B continued, however, to be used extensively in connection with the business activities conducted by the appellant.

The case for the respondents was that the Clicks group had acquired a goodwill adhering to the names, trading styles and slogans employed as a result of the reputation which they had acquired through use in their business. The founding affidavit of Harry Goldin, the managing director of C the respondents, relates that it has for many years been the intention of the Clicks group to extend its trading activities to a nation-wide operation; that intention was extensively advertised with considerable stress throughout on the name "Clicks". The evidence further established the use by respondents of slogans consisting of the word "You pay less at D Clicks"; "You pay less at Clicks Stores", and "I've Clicked at Clicks" with variations thereof. It was accepted by the Court a quo, I think correctly, that the trading styles Clicks and Clicks Stores and the abovequoted slogans, but particularly "You pay less at Clicks", enjoy a substantial reputation throughout South Africa as indicative of the business of the respondents. Even before the Clicks Stores were E established in the Transvaal the advertising which preceded that step was such as to familiarise many Transvalers with the trading styles and the slogans of the Clicks group.

The possibility of confusion between the trading styles and slogans of the Clicks group and the concerns containing the name Glicks as part of their F trading style was first raised in July 1970 in the days when Paul and Miriam Glick were carrying on business in co-partnership under the styles of Glicks, and before a Clicks store was set up in Johannesburg. The attorneys of the company styled Clicks Stores (Pty) Ltd, which was a management company for the Clicks group, wrote a letter to Glicks on 16 July 1970 complaining that that name "will obviously lead to confusion G with our clients' registered name". The replying letter dated 21 July 1970 was to the effect that Mr and Mrs Glick were simply using their own names, and it is denied that there was any danger of confusion. Clicks apparently then left the matter there.

However, in August 1972, when Clicks were advertising the intended H opening of the first Transvaal store...