SUMMARY
The applicant in the matter is Bloomberg Finance L.P, a limited partnership registered in terms of the laws of the United States of America (the “Applicant”). The first respondent is Bloomberg Group (Pty) Ltd, a company registered in terms of the laws of South Africa (the “First Respondent”) and the second respondent is the Commissioner of the Companies and Intellectual Property Commission of South Africa (the “Second Respondent”).
In an unopposed application heard before the Companies Tribunal of the Republic of South Africa (the “Tribunal”), the Tribunal had to determine whether the registered name of the First Respondent, being “Bloomberg Group (Proprietary) Limited” offended Section 11b of the Companies Act 71 of 2008 (the “Act”) in that it was confusingly similar to the Applicant’s registered, well-known and distinctive ‘BLOOMBERG’ trademark (“Application”). The Applicant had to prove the following in order to succeed in the Application: 1) that it was a person with an interest in the name of the First Respondent as required by Section 160(1) of the Act; 2) that the Second Respondent’s registered name was contrary to the provisions of Section 11(2) of the Act; and 3) that the Applicant had good cause to make the Application as required by section 160(2)(b) of the Act.
HELD
Section 60(1) of the Act entitles a person with an interest in the name or registration of the name of a company to apply to the Tribunal for a determination on whether the name of a company satisfies the requirements of the Act. The Applicant was the proprietor of the trade mark ‘BLOOMBERG’ and the First Respondent’s name incorporated such trade mark. The Tribunal thus held that the Applicant was entitled to launch the Application. In terms of the Act, the Applicant also needed to prove that the Second Respondent’s registered name violated both the provisions of Section 11(2) of the Act, and Section 11(2)(b) of the Act which provide against the unauthorised registration of a company name which is confusingly similar to the name of another company or trade mark in respect of which an application has been filed in South Africa for registration as a trade mark, or a well-known trade mark. The Tribunal held that the Applicant had presented evidence which entitled it to protection of its trademark rights in respect of its “BLOOMBERG” trademark against infringement. Further to the aforesaid, the Applicant put forward evidence that the BLOOMBERG trademark was founded by the Applicant in the early 1980’s and was first used worldwide on 31 August 1987. The First Respondent in contrast was only registered on 13 March 2017, almost thirty years after the Applicant had commenced to use its trade mark in South Africa. The Applicant further showed that it was the proprietor of approximately 40 trademarks comprising or incorporating “BLOOMBERG”, which trademarks were registered in South Africa during the period from 1994 until 2014.
The Tribunal, in its decision, noted that First Respondent’s name ‘Bloomberg Group’ and the Applicant’s trade mark ‘BLOOMBERG’ were both aurally and visually similar to one another and could be confused for one another, therefor satisfying the requirements of the Act as set out above. In addition, the Tribunal held that the Applicant had shown good cause to institute proceedings against the First Respondent as required by section 160(2)(b) of the Act, in that immediately as the Applicant become aware of the Second Respondent’s registration of the First Respondent’s alleged offending name, the Applicant launch the t Application.
Accordingly, the Tribunal made the following order: firstly, that the First Respondent was ordered to change its name within 2 months from 17 August 2018 to one which did not incorporate the trade mark “BLOOMBERG”. Secondly, that the Second Respondent was required to process the First Respondent’s name change at no cost, and lastly, if the First Respondent failed to comply with the order of the Tribunal, the Second Respondent would be required to take appropriate steps to ensure e compliance with the Tribunal’s order within three months from 17 August 2018.
VALUE
It is imperative that the persons registering a newly formed entity who wish to register a new company name with CIPC, alternatively the directors of an existing entity who wish to amend the name of their registered company take it upon themselves to perform an extensive due diligence on the potential new name and do not rely solely on CIPC to notify them of a potential conflict before investing time and money in registering and creating a new brand. This must be done to ensure that such new name does not infringe any other company’s trademark rights and litigation in this respect can be avoided.
Written by Michal Asoulin and supervised by Amber Freeman , 02 October 2018
