REPUBLIC OF NAMIBIA

HIGH COURT OF NAMIBIA MAIN DIVISION, WINDHOEK

JUDGMENT

Case no: A 171/2013

In the matter between:

MEGA POWER CENTRE CC t/a TALISMAN PLANT AND TOOL HIRE APPLICANT

and

TALISMAN FRANCHISE OPERATIONS (PTY) LTD 1ST RESPONDENTTALISMAN HIRE 2ND RESPONDENTTHE REGISTRAR OF COMPANIES ANDTRADEMARKS 3RD RESPONDENT

Neutral citation: Mega Power Centre CC t/a Talisman Plant and Tool Hire v

Talisman Franchise Operations (Pty) Ltd and two others (A

171/2013) [2016] NAHCMD 329 (28 October 2016)

Coram: UEITELE, J

Heard: 14 March 2016

Delivered: 28 October 2016

REPORTABLE

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Flynote: Trade and Trademark - Trade - Passing-off - What constitutes - Reputation

associated with certain name - Where applicant’s reputation associated with name

under which product marketed - Minimum requirements for success in interdict

proceedings for passing-off involving use of name where applicant alleging false

representation by respondents about name used by applicant - applicant required to

prove (1) own reputation in relation to name epitomising product and (2) that his name,

or the descriptive words used by him, have acquired a secondary meaning and are

associated in the minds of the public with the applicant's products or business, and with

that of no one else.

Summary: On 30 May 2013 the applicant in this matter launched an urgent

application in this Court in which application the applicant amongst other things sought

an order: (a) Interdicting the respondents from trading under the name of "Talisman"

and from using the name "Talisman" in any way in its trading name in the Republic of

Namibia in a manner that will cause confusion with the business of the applicant; (b)

Interdicting the respondents from utilising the name "Talisman" presently used by the

applicant in any of their advertising materials in the Republic of Namibia; (c) Interdicting

the respondents from advertising their business in any way in the Republic of Namibia

by use of the name "Talisman". The respondents opposed the application.

Held that the onus is on the applicant applying for a final interdict to establish on a

balance of probability the facts and evidence which prove that he has a clear or definite

right in terms of substantive law.

Held further that the incidence of the burden of proof (i.e. the duty that is cast upon a

litigant to adduce evidence that is sufficient to persuade at the end of the trial that the

claim should succeed) once established, never shifts. The applicant had the duty to

satisfy the court that its claim must succeed.

Held further that the applicant failed to place factual evidence from which the court

could deduce that the trade name ‘Talisman’ has been the subject of exposure in

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Namibia and that members of the public believe that it enjoys the reputation which is

worthy of protection at common law.

Held furthermore that the court was not satisfied that the applicant has discharged its

burden and proven that the applicant has established a reputation in Namibia with the

name ‘Talisman Plant & Tool Hire’.

Held that it is not sufficient for the applicant merely to prove that the respondents have

adopted a name for its business similar to the name used by the applicant and where an

applicant uses his own name or mere descriptive words in naming his business, an

interdict will not easily be granted unless the applicant can show that his name, or the

descriptive words used by him, have acquired a secondary meaning and are associated

in the minds of the public with the applicant's products or business, and with that of no

one else.

ORDER

1 The application is dismissed.

2. The Rule nisi issued on 25 September 2014 is hereby discharged.

3. The applicant must pay the respondents’ costs which include the costs of one

instructing and one instructed counsel.

JUDGMENT

UEITELE, J

Introduction

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[1] It has often been said that competition is the life blood of commerce. It is the

availability of the same, or similar, products from more than one source that results in

the public paying a reasonable price therefore. Hence competition as such cannot be

unlawful, no matter to what extent it injures the custom built up by a trader who first

marketed a particular product or first ventured into a particular sphere of commerce.1

But competition may be rendered unlawful by the manner in which a competitor

conducts his or her trade2. This matter concerns the lawfulness or unlawfulness of the

manner (that is the adoption of the name under which the second respondent wants to

trade) in which the second respondent wants to conduct its trade.

[2] The applicant in this matter is a close corporation registered according to the

laws of Namibia by the name of Mega Power Centre CC but which trades as ‘Talisman

Plant and Tool Hire’. The applicant has one member, a certain Mr. Marc Gerhard

Schumacher, who deposed to the affidavit in support of the application.

[3] The first respondent is a private company with limited liability by the name of

Talisman Franchise Operations (Pty) Ltd and incorporated according to the laws of the

Republic of South Africa and the second respondent is also a private company by the

name of Lambray Island Investments (Pty) Ltd which is incorporated in accordance with

the laws of Namibia but which trades as ‘Talisman Hire Windhoek’. The second

respondent is a franchisee of the first respondent. Except where the context otherwise

requires I, will in this judgment, refer to these two respondents as ‘the respondents’. The

third respondent is the Registrar of Companies and Trade Marks, it did not oppose the

application and I will therefore not make any mention of it in in this judgment.

1 Van Heerden JA in the matter of Taylor & Horne (Pty) Ltd v Dentall (Pty) Ltd 1991 (1) SA 412 (A) at 421 – 422.

2 Corbett J (as he then was) Dun and Bradstreet (Pty) Ltd v SA Merchants Combined Credit Bureau (Cape) (Pty) Ltd 1968 (1) SA 209 (C) at 216.

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[4] The background facts in this matter have been set out in detail by Miller AJ in his

judgment3 and also by the Supreme Court4 in its reasons, I will therefore not in detail

deal with the backgrounds facts. In a nutshell the applicant alleges that at the time that

it commenced these proceedings (that is on, 30 May 2013) it had, for 7 years (that is

since 2006), been carrying on the business of selling and hiring out operator intensive

equipment such as excavators, telescopic handlers, scissor lifts, tipper trucks and

hydraulic mixers in Windhoek under the name ‘Talisman Plant and Tool Hire’.

[5] The applicant further alleges that during April 2013, Mr. Schumacher of the

applicant heard a rumour that a South African company (which turned out to be the

second respondent) intended to start trading in Namibia using the ‘Talisman Hire

Windhoek’ brand. On 20 May 2013 Mr. Schumacher’s attention was drawn to an

advertisement by the respondents in a local newspaper edition of Friday 17 May 2013

to the effect that the respondents’ intended to conduct the business of selling and hiring

of construction equipment including operator intensive equipment in Namibia and that

the respondents would be opening such a business on 1 June 2013. He further alleges

that he also learnt that the respondent had applied for the registration of the trademark

‘Talisman’ in Namibia and was intending to start trading in Namibia under the name

‘The Hire Empire’ and using the words ‘Talisman Hire Windhoek’.

[6] On 21 May 2013 the applicant’s legal practitioners addressed a letter to the

respondents requesting the respondents not to trade under the name ‘Talisman Hire’.

The respondents did not comply with the request contained in the letter of 21 May 2013.

To the contrary, the respondents made it clear that they would continue with their

proposed conduct of using the name ‘Talisman Hire’ while essentially selling the same

product and providing the same services as the applicant does in the construction

industry.

3 The case is as yet unreported: Mega Power Centre CC t/a Talisman Plant and Tool Hire v Talisman Franchise Operations (Pty) Ltd (A 171/2013 [2013] NAHCMD 171 (7 June 2013).

4 The case is as yet unreported: Mega Power Centre CC t/a Talisman Plant and Tool Hire v Talisman Franchise Operations (Pty) Ltd Case No. SA 46/2013 delivered on 18 December 2014.

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[7] The applicant, (alleging that it feared that if the respondents were permitted to

open their business as proposed, the public would be deceived into thinking that the

respondents’ business was connected to that of the applicant, which would be

prejudicial to the applicant) on 30 May 2013 launched an urgent application in this Court

in which application the applicant amongst other things sought an order:

(a) Interdicting the respondents from trading under the name of "Talisman" and from

using the name "Talisman" in any way in its trading name in the Republic of

Namibia in a manner that will cause confusion with the business of the applicant;

(b) Interdicting the respondents from utilising the name "Talisman" presently used by

the applicant in any of their advertising materials in the Republic of Namibia;

(c) Interdicting the respondents from advertising their business in any way in the

Republic of Namibia by use of the name "Talisman".

[8] The respondents opposed the application and on 7 June 2013 this court per

Miller AJ5 dismissed the applicant’s application on the basis that whilst the applicant had

prima facie established that it had built up a reputation in the building and construction

industry and that the name 'Talisman' was associated with the applicant in that sector, it

had not proved that the conduct of the second respondent would be likely to cause

damage to the applicant.6 The learned judge said:

‘[45] Mr. Heathcote submitted that there is insufficient evidence before me to establish

that the applicant built up a reputation in the use of the word “talisman”. I do not

agree. There is a direct assertion, supported by factual allegations, that the

applicant did acquire over the years such a reputation in the building and

construction industry. Nothing to the contrary, was placed before me, and the

probabilities will indicate the likelihood that such a reputation became

established.

5 See footnote 3 supra.6 Ibid paras 45-48.

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[46] I agree with Mr. Heathcote that the word “talisman” is not a fancy or invented

word. It is a word commonly used in the English language. I also agree with Mr.

Heathcote that the applicant is not entitled to the exclusive use of the name.

[47] Against that I must point out, although not clearly apparent from the relief

claimed, that both the applicant and the second respondent use the name

“talisman” in conjunction with the word “hire”. To that extent and in that context I

find that the words complained of prima facie is likely to cause confusion.’

[9] The applicant was not satisfied with the dismissal of its application and appealed

to the Supreme Court. On 18 December 2014 the Supreme Court handed down its

reasons for an earlier order (the order was granted on 25 September 2014) allowing the

appeal7. The Supreme Court, on 25 September 2014, granted the interim interdictory

relief and issued a rule nisi calling on the respondents to show cause on 23 October

2014 why the relief should not be made final. The matter was then referred back to this

court to hear arguments as to why the interim interdictory relief should not be made

final. The return date that was set for 23 October 2014 was extended on one or two

occasions and ultimately to 14 March 2016 on which date I heard arguments from the

parties with respect to whether or not the rule nisi should be confirmed.

The basis on which the applicant seeks a final relief.

[10] The applicant contended, in its founding affidavit, that:

(a) Since 2006 it has built up a reputation and goodwill in the construction industry in

Namibia as one of the main suppliers of operator intensive equipment in

Namibia.

(b) If the respondents are permitted to conduct their business in Namibia using the

name ‘Talisman’ in any way or form of this name would be likely to deceive and

confuse people into believing that they are dealing with Talisman Plant and Tool

7 See footnote 4 supra.

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Hire’ or that there is an association between such person and Talisman Plant and

Tool Hire’.

(c) The conduct of the respondents is likely to cause the applicant extensive and

irreparable harm.

(d) The applicant's goodwill, trade name and business reputation, established by the

use of 'Talisman Plant and Tool Hire’, will be infringed by the respondents'

proposed conduct which constitutes unlawful competition and more particularly

an unlawful act of passing-off.

[11] The respondents’ response to the applicant’s contentions may be summed up as

follows:

(a) They (i.e. the respondents) deny that Mega Power Centre CC (the applicant) has

acquired any reputation in Namibia in the name ‘Talisman Hire’ and aver that, the

applicant has failed to place primary facts before the court from which a

conclusion of the existence of a reputation can be drawn.

(b) They deny that the applicant has any goodwill in the name ‘Talisman Hire’, which

is capable of being infringed or eroded.

(c) Generally, they deny passing-off or unlawful competition or both passing off and

unlawful competition. They submitted that the respondents conduct business in

South Africa as Talisman Franchise Operations (Pty) Ltd and it has established

an extensive use of the trade mark ‘Talisman’ in South Africa. They further

alleged that Mr. Schumacher full knowing that the name Talisman belongs to

someone else filched the name.

[12] I am therefore of the view that from what I have stated above in paragraphs 10

and 11 and from the pleadings filed in this matter the crux of this matter turns around

the question of whether or not the applicant has succeeded in proving that the

respondents have committed the well-established delict of passing-off. Before I

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consider that question I will briefly set out the legal principles in respect of the delict of

passing-off.

The Legal Principles in respect of the delict of passing-off.

[13] In dealing with passing-off Corbett JA, (as he then was), stated as follows in the

matter of Brian Boswell Circus (Pty) Ltd and Another v Boswell-Wilkie Circus (Pty) Ltd 8

‘The wrong known as passing off is constituted by a representation, express or implied,

by one person that his business or merchandise, or both, are, or are connected with

those of another … Where they are implied, such representations [concerning the

wrongdoer's business] are usually made by the wrongdoer adopting a name for his

business which resembles that of the aggrieved party's business; and the test is then

whether in all the circumstances the resemblance is such that there is a reasonable

likelihood that ordinary members of the public, or a substantial section thereof, may be

confused or deceived into believing that the business of the alleged wrongdoer is that of

the aggrieved party or is connected therewith. Whether there is such a reasonable

likelihood of confusion is a question of fact to be determined in the light of the particular

circumstances of the case.’

[14] In the matter of Williams t/a Jenifer Williams & Associates and Another v Life

Line Southern Transvaal9 Corbett CJ refined that statement as follows:

‘Passing-off is a species of wrongful competition in trade or business. In its classic form

it usually consists in A representing, either expressly or impliedly (but almost invariably

by the latter means), that the goods or services marketed by him emanate in the course

of business from or that there is an association between such goods or services and the

business conducted by B. Such conduct is treated by the law as being wrongful because

8 1985 (4) SA 466 (A) at 478F - I: This articulation of the principle was approved by the Supreme Court in the matter of Gonschorek and Others v Asmus and Another 2008 (1) NR 262 (SC) at 279.

9 1996 (3) SA 408 (A) at 418E-H.

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it results, or is calculated to result, in the improper filching of another's trade and/or in an

improper infringement of his goodwill and/or in causing injury to that other's trade

reputation. Such a representation may be made impliedly by A adopting a trade name or

a get-up or mark for his goods which so resembles B's name or get-up or mark as to

lead the public to be confused or to be deceived into thinking that A's goods or services

emanate from B or that there is the association between them referred to above. Thus,

in order to succeed in a passing-off action based upon an implied representation it is

generally incumbent upon the plaintiff to establish, inter alia: firstly, that the name, get-up

or mark used by him has become distinctive of his goods or services, in the sense that

the public associate the name, get-up or mark with the goods or services marketed by

him (this is often referred to as the acquisition of reputation); and, secondly, that the

name, get-up or mark used by the defendant is such or is so used as to cause the public

to be confused or deceived in the manner described above.’ (Italicized and underlined

for emphasis)

[15] In the English case of Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd10.

Lord Diplock said that it is possible to identify five characteristics which must be present

in order to create a valid cause of action for passing off. In my view four of the five

characteristics can also be identified from the statements of Corbett CJ11. The four

characteristics are:

(a) The defendant must have made a misrepresentation;

(b) The misrepresentation must be made by a trader in the course of trade;

(c) The misrepresentation must be made to prospective customers of his or ultimate

consumers of goods or services supplied by him;

(d) The misrepresentation must be made or calculated to injure the business or

goodwill of another trader.

10 [1979] AC 731, [1980] R.P.C. 31.11 In both the Brian Boswell Circus (Pty) Ltd and the Williams t/a Jenifer Williams matters.

10

Of these characteristics I will elaborate only two namely the requirement that there must

be a misrepresentation and the requirement that the misrepresentation must be made

or calculated to injure the business or goodwill of another trader.

The defendant must have made a misrepresentation.

[16] The essence of an action for passing-off is to protect a business against a

misrepresentation. The plaintiff (applicant in this case) bears the onus to prove in each

case as a fact that a misrepresentation was made. The misrepresentation may have

been made by express words or may have been made impliedly. Corbett CJ recognizes

that the misrepresentation by express word is rare, the misrepresentation is invariably

made impliedly. The misrepresentation is also normally of a particular kind, namely that

the business, goods or services of the representor is that of the plaintiff or is associated

with the business of the plaintiff.12 In the matter of Premier Trading Co (Pty) Ltd and

Another v Sporttopia (Pty) Ltd13 Nienaber JA stated that passing-off:

‘… is a wrong consisting of a false representation made by one trader (the defendant) to

members of the purchasing public that the enterprise, goods or services of a rival trader

(the plaintiff) either belong to him (the defendant) or are connected, in the course of

trade, with his own enterprise, goods or services … The defendant's representation is a

misrepresentation if it is likely to deceive or confuse a substantial number of members of

the public as to the source or origin of his product. Passing-off, to be actionable, erodes

the plaintiff's goodwill. Goodwill is the product of a cumulation of factors, the most

important of which in the context of passing-off, is the plaintiff's reputation.’

The misrepresentation must be made or calculated to injure the business or goodwill of

another trader.

[17] The essence of what is protected by the courts is the reputation of a business.

Since the court protects the reputation of a business the plaintiff (applicant in this case)

12 See the South African case of Capital Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc and Others 1977 (2) SA 916 (A) at 929C--D).

13 2000 (3) SA 259 (SCA).) at 266 and 267.

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must allege and prove that its trade name, trade mark, get-up or service mark was

known in the market and that the plaintiff’s goods, business or service acquired public

reputation or became distinctive from other similar goods, business or service. It follows

that where plaintiff uses a word in its ordinary meaning in connection with his or her

goods or business or uses a trade or services or trade name which is a descriptive term,

the plaintiff must prove that through use the word acquired a secondary meaning and

designates the plaintiff’s goods services or business. In the matter Gonschorek and

Others v Asmus and Another14 Strydom AJA articulates it as follows:

‘[70] Because nobody can lay claim a monopoly in a family name, or a descriptive or

generic word, the courts would, in the first instance, protect the applicant if the name has

acquired a secondary meaning or if it is proved that the goods have acquired a

reputation and that the defendant has led the public to believe that they are buying the

goods of the plaintiff … In the second instance the courts will grant a plaintiff protection if

there is proof of relevant reputation and/or that the name or get-up of the defendant's

goods are likely to confuse a substantial number of the public in believing that the goods

of the defendant are those of the plaintiff.’

[18] Nicholas J put it as follows in the matter of Adcock-Ingram Products Ltd v

Beecham SA (Pty) Ltd:15

‘The delict of passing off consists in a representation, direct or indirect, by a

manufacturer or supplier that his business or goods or both are those of a rival

manufacturer or supplier. In the case of an indirect representation, the plaintiff must

prove in the first instance that the defendant has used or is using in connection with his

own goods a name, mark, sign or get up which has become distinctive.

"... in the sense that by the use of (the plaintiff's) name or mark, etc., in relation to

goods they are regarded, by a substantial number of members of the public or in the

trade, as coming from a particular source known or unknown..."

14 2008 (1) NR 262 (SC) at 280-281 para [70] .15 1977 (4) SA 434 (W) at 436-437.

12

(Halsbury, Laws of England, 3rd ed., vol. 38, p. 597). In other words, the plaintiff must

prove that the feature of his product on which he relies has acquired a meaning or

significance, so that it indicates a single source for goods on which that feature is used

… It is not necessary that the get up as a whole should be distinctive, for a part of the

get up may be shown to be so identified with the plaintiff's goods that its use for similar

goods is calculated to pass them off as his.’

[19] Van Dijkhorst J put it as follows in the matter of Bress Designs (Pty) Ltd v G Y

Lounge Suite Manufacturers (Pty) Ltd and Another16:

‘In every passing off case two propositions have to be established by a plaintiff before he

can succeed. The first is that his name, mark, sign or get-up has become distinctive, that

is, that in the eyes of the public it has acquired a significance or meaning as indicating a

particular origin of the goods (business, services) in respect of which that feature is

used. This is called reputation. The second is that the use of the feature concerned was

likely to deceive and thus cause confusion and injury, actual or probable, to the goodwill

of the plaintiff's business’.

[20] In the Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd Nicholas J held that

the fact that a plaintiff can show that he has acquired a reputation in the feature on

which he relies, is not, however, enough in itself. The plaintiff must prove in addition that

the defendant's use of the feature or name concerned was calculated to deceive. He

said:

‘Apart from monopolies conferred by patents, and apart from protection afforded by

registration, it is open to anyone to adopt the ideas or devices of his neighbours and

apply them to his own goods provided he clearly distinguishes his goods from those of

his neighbour…In Pasquali Cigarette Co. Ltd. v Diaconicolas & Capsopolus, 1905 T.S.

472, Solomon, J., after stating that the defendant's label was undoubtedly to some

extent copied from the plaintiff's label, said at p. 479:

16 1991 (2) SA 455 (W) Also see the Namibian case of Sparletta (Pty) Ltd v Namibia Breweries Ltd 1991 NR 384 at p. 398.

13

"That, however, is not sufficient, for the plaintiffs have to prove not only that there

has been a certain amount of copying, but they must prove that the defendants have

produced such a colourable imitation of their box or label that the ordinary purchaser

would be deceived; and, if the defendants in what they have done have fallen short

of that, even though they have made to some extent a copy of the plaintiff's labels,

they would not bring themselves within the provisions of the law. A certain amount of

imitation in these matters is perfectly legitimate. If one manufacturer sees that

another manufacturer gets up his wares in a form which attracts the public, he is

entitled to some extent to take a lesson from his rival and to copy the get-up provided

that he makes it perfectly clear to the public that the articles which he is selling are

not the other manufacturer's, but his own articles, so that there is no probability of

any ordinary purchaser being deceived. So long as it does that a certain amount of

imitation is legitimate."

The plaintiff must prove that the defendant's use of the feature concerned was likely or

calculated, to deceive, and thus cause confusion and injury, actual or probable, to the

goodwill of the plaintiff's business, as, for example, by depriving him of the profit that he

might have had by selling the goods which, ex hypothesi, the purchaser intended to buy.’

Having outlined the core legal principles of the delict of passing off I proceed to consider

whether the applicant has established that delict by the respondents.

Submissions by the Parties

[21] Mr. Frank who appeared for the applicant submitted that both the High Court17

and the Supreme Court18 made it clear that the applicant had already at the interim

stage made out a prima facie case that it (applicant) had acquired a reputation in the

construction industry and that the name ‘Talisman’ was associated with the applicant’s

business in that sector.

[22] Mr. Frank continued and argued that, apart from an attempt to cast negative

aspersions on the character of Mr. Schumacher of the applicant, the respondent was

17 See footnote 4 supra.18 See footnote 5 supra.

14

not able to do anything other than raise bare denials. Considering that the applicant had

already made out a prima facie case at the interim stage, the bare denials of the

respondent have elevated that prima facie proof to conclusive proof and the applicant

has discharged its onus.

[23] Mr. Michau who appeared for the respondents submitted that both the Supreme

Court did not find that the applicant had proved that it had a protectable reputation in

Namibia. He argued that the Supreme Court simply dealt with the finding of the High

Court in not granting an interim interdict once the High Court was of the view that there

was a passing of prima facie.

[24] Mr. Michau thus argued that the applicant’s founding affidavit demonstrate a

complete absence of evidence which would justify a finding of a protectable reputation.

He submitted that there was not a single supporting affidavit from individuals in the

trade testifying to a repute in the trade mark Talisman and that there was not a single

statement to what the extent of the use of the trade mark Talisman has been by the

applicant, what the turnover figures are and what the amounts are that had been spent

on advertising (if any). There is no evidence of the extent of the exposure of the

Talisman trade mark. There is therefore no primary factual evidence from which the

Court can deduce that the trade mark Talisman has been the subject of any exposure in

Namibia and that the members of the public believe that it enjoys a reputation which is

worthy of protection at common law.

Determination

[25] Before I venture into determining whether the applicant has established that the

respondents have committed the delict of pass off I wish to make the following

preliminary remarks. The first preliminary remark is that, it is now well established that

in application proceedings the affidavits take the place not only of the pleadings in

action proceedings but also of the essential evidence which would be led at a trial. In

the South African case of Hart v Pinetown Drive-In Cinema (Pty) Ltd19 Miller J said:19 1972 (1) SA 464 (D).

15

‘It must be borne in mind, however, that where proceedings are brought by way of

application, the petition is not the equivalent of the declaration in proceedings by way of

action. What might be sufficient in a declaration to foil an exception, would not

necessarily, in a petition, be sufficient to resist an objection that a case has not been

adequately made out. The petition takes the place not only of the declaration but also of

the essential evidence which would be led at a trial and if there are absent from the

petition such facts as would be necessary for determination of the issue in the

petitioner's favour, an objection that it does not support the relief claimed is sound.’

[26] In the matter of Patrick Inkono v The Council of the Municipality of Windhoek 20

Schimming-Chase, AJ said the following:

‘It is trite law that in motion proceedings the affidavits serve not only to place evidence

before the Court but also to define the issues between the parties. In so doing the issues

between the parties are identified. This is not only for the benefit of the Court but also,

and primarily, for the parties. The parties must know the case that must be met and in

respect of which they must adduce evidence in the affidavits.’

[27] The second remark relates to the distinction between an interim interdict and a

final interdict. The difference between the two lies in the fact that unlike an interim

interdict, which does not involve a final determination of rights of the parties, a final

interdict affects the final determination of the rights of the parties21. In order to obtain a

final interdict the plaintiff must, as first requirement, allege and prove the existence of a

clear right. Prest22 argue that the word ‘clear’ relates to the degree of proof required to

establish the right and should strictly not be used to qualify the ‘right’ at all.23 He

continues and argue that the existence of a right is a matter of substantive law. Whether

that right is clearly established is a matter of evidence.

20 An unreported judgment of this Court, Case No A 55/2013 [2013] NAHCMD 140 (delivered on 28 May 2013).

21 Minister of Law and Order, Bophuthatswana, and Another v Committee of the Church Summit of Bophuthatswana and Others 1994 (3) SA 89 (BG) at 97 -100.

22 Prest C B: The Law and Practice of Interdicts.23 Op cit at 43.

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[28] With those preliminary remarks I now turn to the facts of this matter. The

applicant claims that it has a right to the protection of its trade reputation (this is a

matter of substantive law). The respondents do not dispute the existence of such a

right. What I understand the respondents to dispute is the applicant’s claim that it has

built up a reputation with the name ‘Talisman’ (this is a question of evidence).

[29] The onus is on the applicant applying for a final interdict to establish on a

balance of probability the facts and evidence which prove that he has a clear or definite

right in terms of substantive law.24 It thus follows that in this matter the applicant carries

the onus to place before the court the facts and the evidence which on a balance of

probability would lead the court to conclude that the applicant has built up a reputation

with the name ‘Talisman’. I will quote in detail from Mr. Schumacher‘s affidavit the

allegations he makes in the applicant’s founding affidavit to prove that it has built up a

reputation with the name ‘Talisman’. He said the following:

‘6

The basis of this application is that the second respondent is in the process of opening

for the first respondent an outlet in Windhoek on 1 June 2013 through the first

respondent as franchisor. At this outlet the second respondent will be selling and hiring

building construction equipment under the name “Talisman Hire”. I state that the

applicant has been selling and hiring building construction equipment and machinery in

Namibia under its trading name “Talisman Plant & Tool Hire” since 2006. The applicant

has built up a reputation and good will in Namibia under the name Talisman over the

past 7 years…

12

I admit that at the time I started trading as “Talisman Plant & Tool Hire’’ I was aware that

there was a company in South Africa bearing the same name, did the same business in

South Africa, namely Talisman Plant & Tool Hire. However after doing my research in

2006 I established that this business had no presence whatsoever in Namibia and that in

Namibia I would not be unfairly or unlawfully competing with that business in South

Africa, my business being restricted to a jurisdiction where it had no presence

24 See Nienaber v Stuckey 1946 AD 1049 at 1053-4.

17

whatsoever and where I would be the first to conduct a business of this kind using the

Talisman name here.

13

The “Talisman’’ business grew steadily and I developed a client base in Namibia with

large construction companies, developers as well as mining companies and parastatals

that were interested in the purchase or hire of operator intensive construction machinery.

This machinery is used all over Namibia for construction purposes.

14

During the beginning of 2008, the applicant had developed a steady client base and I

decided to develop a brand encompassing the “Talisman’’ name. I contracted ‘’Image

Print Sign Manufacturers ‘’ who developed and produced the applicant’s signage and

logo. This sign shop has been doing the applicant’s signage from January 2008 to date. I

refer to annexure ‘’MS3’’25 a letter from Johan Tromp. I am at this stage not able to file a

confirmatory affidavit but will do so by the date that the matter is heard. The signage

encompasses the name ‘’ Talisman Plant Hire’’. In order to develop this brand I ensured

that the applicant’s trading name was branded on all equipment sold by it. I attach hereto

as MS4 TO MS6 ‘’respectively photographs of operator intensive construction equipment

bearing the name ‘’Talisman Plant Hire’’ and the applicants cell number. This name

appears on most if not all equipment and machinery sold or hired by the applicant.

15

In order to protect the applicants developing reputation, brand and trading name, I

registered a defensive name for ‘’Talisman Plant & Tool Hire’’ with the registrar of the

companies through Binneman Visser the applicant’s erstwhile auditors in 2006. I do not

have a copy of the 2006 registration however I am in possession of a printout from the

electronic database at the companies’ office showing the existence of a defensive

registration of the name’’ Talisman Plant & Tool Hire’’ during 2006 under certificate

D/2006/4410. It is annexed as MS7’’.

25 Annexure “MS 3” is a letter from Mr. Tromp in which he simply states the following: “This letter confirms that we have been doing signage for Mr. Schumacher’s company called Talisman Plant and Tool Hire since 10 January 2008 till this day 28 /05/2013”.

18

16

I also obtained a Certificate for Registration of Defensive Name for the name ‘’Talisman

Plant & Tool Hire’’ for the periods 12 December 2008 to 20 December 2009 on 6

January 2009 (‘’MS8’’); 21 December 2009 to 20 December 2010 on 16 December 2009

(‘’MS9’’); 21 December 2010 to 20 December 2012 on 13 December 2010 (‘’MS10’’);

and 25 April 2013 to 24 April 2015 on 25 April 2013 (‘’MS11’’). The applicant however

never registered a trademark. However I applied for the registration of “Talisman Plant &

Tool Hire’’ as a trademark with the Registrar of Trademarks on 15 April 2013. I will deal

with this aspect in more details below. I refer to ‘’ MS12’’ hereto, an extract from the

trademark register.

17

I point out that the certificate of registration of my defensive name for the period 25 April

2013 to 24 April 2015 as well as the date it was obtained is significant, as my current

legal practitioners of record established on 28 May 2013 that the second respondent

obtained a Certificate of Registration of Defense Name on 10 April 2013. During this

period defensive registration had lapsed. I refer to ‘’MS13’’ being the second

respondent’s certificate of registration of defensive name. I also deal with this aspect in

more detail below.

18

In the meantime the applicant continued trading and conducting its business under the

name “Talisman Plant & Tool Hire’’ and build up a reputation in the local market as one

of the main suppliers of operator intensive equipment in Namibia. I employ some 17

people at the applicant’s premises at 4 Einstein Street, Windhoek. I attach hereto as

‘’MS14’’ a list of employees of the applicant, 3 of which have been employed with the

applicant since 2006.

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I state that the Talisman name in the construction industry is directly related to me. I

have worked tirelessly to build a reputation of excellence and service in Namibia. I am

not at this stage in a position to annex the applicant’s financial statements, but I do

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annex a letter from my auditors, Essie Herbst & Associates. They have been the

applicant’s accounting officers since 2007. The letter confirms that the applicants has

been growing steadily since inception with a steady increase in turnover over the years.

It also confirms that for the year 2011-2012 there was a steep increase in turnover and

that the applicant at all material times complied with the Insolvency Act, 24 of 1936. I

refer to ‘’MS15’’ as well as the confirmatory affidavit of Essie Herbst, which will be

delivered before the hearing of this application.’

[30] The above quoted paragraphs are the only paragraphs in Mr. Schumacher‘s

affidavit which deal with the issue of the applicant’s reputation. He in essence deals with

the applicant’s reputation in a single phrase, saying that he has worked tirelessly in

building the applicant’s reputation with name Talisman since 2006. Mr. Frank argues

that by this statement the applicant has during the application for the interim relief made

out a prima facie case that it has built up a reputation with the name ‘Talisman’, and

because the respondents are simply denying the allegations by the applicant the bare

denials by the respondents have elevated that prima facie proof to conclusive proof.

[31] I do not agree with Mr. Frank. My reasons for disagreeing with Mr. Frank are

based on the principles relating to the burden of proof as enunciated in the case of

Pillay v Krishna and Another26 where Davis AJA said:

'If one person claims something from another in a Court of law, then he has to satisfy the

Court that he is entitled to it. But there is a second principle which must always be read

with it... Where the person against whom the claim is made is not content with a mere

denial of that claim, but sets up a special defence, then he is regarded quoad that

defence, as being the claimant: for his defence to be upheld he must satisfy the Court

that he is entitled to succeed on it ... But there is a third rule, which Voet states in the

next section as follows: "He who asserts, proves and not he who denies, since a denial

of a fact cannot naturally be proved provided that it is a fact that is denied and that the

denial is absolute’.

[32] From the above quotation it is clear that the incidence of the burden of proof (i.e.

the duty that is cast upon a litigant to adduce evidence that is sufficient to persuade at

26 1946 AD 946 at 951-952.

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the end of the trial that the claim should succeed) once established, never shifts.27 It

follows that the applicant had the duty to satisfy the court that its claim must succeed.

[33] In my view Mr. Schumacher, in the applicant’s affidavit, simply makes allegations

which do not amount to factual evidence, or makes conclusions of facts without

providing the primary facts on which the secondary facts (the conclusions) are based.28

Affidavits in application proceedings must do more than make bald allegations; they

must, in addition, provide the facts that support the allegations.29

[34] The Concise Oxford English Dictionary defines reputation as follows: ‘the beliefs

or opinions that are generally held about someone or something or a wide spread belief

that that someone or something has a particular characteristic’. In the matter of Premier

Trading Co (Pty) Ltd and Another v Sporttopia (Pty) Ltd30Nienaber JA said that

‘Reputation, after all, is the collective opinion held by a particular section of the

community about something or somebody.’ The relevant opinion, for present purposes,

is that of customers or potential customers of Talisman Plant & Tool Hire.

[35] If the applicant had established a reputation as alleged by Mr. Schumacher with

the name “Talisman” amongst large construction companies, developers or mining

companies and parastatals, one would have expected some particularity and perhaps

even confirmatory affidavits from some of those companies and parastatals. I therefore

agree with Mr. Michau when he argued that there is no primary factual evidence from

which the court can deduce that the trade mark Talisman has been the subject of

exposure in Namibia and that members of the public believe that it enjoys the reputation

which is worthy of protection at common law. Evidence, in this case, of the reputation

Talisman Plant & Tool Hire enjoyed in the market-place with customers and potential

27 PJ Shcwikkard et al The Principles of Evidence: second ed Juta 2002 at 538. 28 In the matter of Willcox and Others v Commissioner for Inland Revenue 1960 (4) SA 599 (A) at 602

Schreiner JA explained the concept of ‘primary’ and ‘secondary’ facts as follows: ‘Facts are conveniently called primary when they are used as the basis for inference as to the existence or non-existence of further facts, which may be called, in relation to primary facts, inferred or secondary facts.’

29 A M Moolla Group Ltd and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA) at 585.30 2000 (3) SA 259 (SCA) at 272.

21

customers is conspicuously lacking. I am therefore not satisfied that the applicant has

discharged its burden and proven that the applicant has established a reputation in

Namibia with the name ‘Talisman Plant & Tool Hire’.

[36] There is more. The words ‘Talisman’ and ‘Hire’ are not fancy or invented words.

They are words commonly used in the English language. Strydom AJA31 remarked that

the courts would only protect the applicant if the name has, in connection with goods,

business or service acquired a secondary meaning. The learned judge said:

‘Normally, the reputation required to be established by the plaintiff in an action for

passing off is that the name, mark or other feature has by use come to be regarded as

identifying goods or services from a particular source known or unknown; or where there

is passing off of a product which has a character intrinsic to its descriptive name, as

denoting goods or services of a particular composition, standard, quality or geographical

origin. The fact that only the plaintiff has in the past made use of the name, mark or

other feature concerned is not conclusive that it has come to be regarded as distinctive,

but distinctiveness will readily be inferred when the name, mark or other feature is

invented or fancy and has no direct relation to the character or quality of the goods.’

[37] What the applicant had to prove in the present case, therefore, was firstly that the

name ‘Talisman’ had become distinctive of the applicant’s goods and service in the

sense that it had come to be regarded as identifying the goods or services supplied by

the applicant; and secondly that the use of the name ‘Talisman’ by the respondent was

calculated to deceive hirers or purchasers of building construction equipment and

machinery in Namibia. In regard to the first point, the applicant said in its founding

affidavit that at the time it entered the market in 2006 it was the only supplier who sold

and hired out building and construction equipment in Namibia.

[38] I have no doubt that the applicant was the first and only one selling and hiring out

building construction equipment in Namibia. But, as appears from the authorities I have

referred to in this judgment, this is not the sense in which the word "distinctive" is used

in passing off cases. It is not sufficient for the applicant merely to prove that the 31 Supra footnote.

22

respondents have adopted a name for its business similar to the name used by the

applicant. Where the applicant has used an invented or fancy name for his business it

will more easily be found that the respondents, if they use the same or a similar name

for their own business, are falsely representing their business as being that of, or being

associated with, the business of the applicant. However, where an applicant uses his

own name or mere descriptive words in naming his business, an interdict will not easily

be granted unless the applicant can show that his name, or the descriptive words used

by him, have acquired a secondary meaning and are associated in the minds of the

public with the applicant's products or business, and with that of no one else. The

applicants have not made any attempt to prove that. I have thus come to the conclusion

that the applicant has failed to make out a case for relief in terms of the interdict against

passing off and consequently the application must be dismissed.

[39] I now turn to the issue of costs. The basic rule is that, except in certain instance

where legislation otherwise provides, all awards of costs are in the discretion of the

court.32 It is trite that the discretion must be exercised judiciously with due regard to all

relevant considerations. The court's discretion is a wide, unfettered and an equitable

one.33 There is also, of course, the general rule, namely that costs follow the event, that

is, the successful party should be awarded his or her costs. This general rule applies

unless there are special circumstances present.

[40] It is for the reasons indicated that I make the following order:

1 The application is dismissed.

2. The Rule nisi issued on 25 September 2014 is hereby discharged.

3. The applicant must pay the respondents’ costs which include the costs of one

instructing and instructed counsel.

32 Hailulu v Anti-Corruption Commission and Others 2011 (1) NR 363 (HC) and China State Construction Engineering Corporation (Southern Africa) (Pty) Ltd v Pro Joinery CC 2007 (2) NR 674.

33 See Intercontinental Exports (Pty) Ltd v Fowles 1999 (2) SA 1045.

23

---------------------------------SFI Ueitele

Judge

24

APPEARANCES

APPLICANT: T J Frank, SC

(With him Ms. Essi Schimming Chase)

Cowley Inc.

FIRST AND SECOND

RESPONDENTS: R Michau, SC

Instructed by HD Bossau & Company