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REPUBLIC OF NAMIBIA

HIGH COURT OF NAMIBIA MAIN DIVISION, WINDHOEK

JUDGMENT

Case no: A 332/2014

In the matter between:

MICHAEL DEMTSCHUK

t/a RENTOKIL NAMIBIA PEST CONTROL SERVICES APPLICANT

and

RENTOKIL INITIAL 1927 PLC FIRST RESPONDENT

THE REGISTRAR OF TRADE MARKS SECOND RESPONDENT

THE REGISTRAR OF COMPANIES THIRD RESPONDENT

MINISTRY OF TRADE AND INDUSTRY FOURTH RESPONDENT

Neutral citation: Demtschuk v Rentokil Initial 1927 PLC (A 332/2014) [2016] NAHCMD 348 (10 November 2016)

Coram: PARKER AJ

Heard: 17 August 2016

Delivered: 10 November 2016

Flynote: Patents and trademarks – Application to vary entry in Register of Trade Marks by expunction from the Register – In 1998 the applicant Demtschuk registered trade name Rentokil as a defensive trade name in terms of the Companies Act 61 of 1973 (as amended) – Court held that any reputation attaching to the name Rentokil in Namibia has been built by Demtschuk in the rendering of pest control and connected services – On a fair conspectus of the evidence the court held that the prolonged, extensive and demonstrably largely undisturbed use of the name over a long period of time by Demtschuk has come to be regarded as identifying the distinctive services rendered by Demtschuk on an extensive and varied scale – Court satisfied that Rentokil was connected to particular reputation attaching to services rendered by Demtschuk – Such reputation damaged by Rentokil Initial registering Rentokil as a trade mark in its favour in 2003 – Accordingly, court held that that entry was made without sufficient cause within the meaning of s 33(1) of Act 48 of 1973 – As respects the counter application court held that the respondent Rentokil Initial (applicant in reconvention) seeking protection for a foreign trade mark must rely on the common law protection of passing of – Court held respondent’s reliance on passing off cannot succeed because it has failed to establish that it trades in Namibia in the sense that it has a going business in Namibia and has customers and therefore will suffer damages if it is not granted the relief sought – There is nothing that respondent in reconvention (Demtschuk) has done or not done or likely to do which is likely to harm Rentokil Initial in the patrimonial sense in Namibia – Court concluded that it is respondent in reconvention (Demtschuk) which has established the reputation in Namibia attaching to the trade name and it is applicant in reconvention (Rentokil Initial) whose use of the mark in Namibia was likely to deceive and thus cause confusion and injury, actual or probate, to the reputation and goodwill of Demtschuk’s business of pest control and connected services in Namibia – In the result Demtschuk’s application granted with costs and Rentokil Initial’s counter application dismissed with costs.

Summary: Patents and trademarks – Application to vary entry in Register of Trade Marks by expunction from the Register – In 1998 the applicant (in convention) Demtschuk had registered the name Rentokil as a defensive trade name in terms of the Companies Act 61 of 1973 (as amended) – Applicant did so only after conducting reasonable enquiries at the Companies Office which revealed that no entity traded under that name in Namibia – Since 1998 Demtschuk has carried out pest control and connected services in Namibia in names that includes Rentokil – Court concluded that it is Demtschuk which has established the reputation in Namibia attaching to the trade name Rentokil and it is applicant in reconvention (Rentokil Initial) whose use of the mark in Namibia was likely to deceive and thus cause confusion and injury, actual or probate, to the reputation and goodwill of Demtschuk’s business of pest control services and connected services in Namibia – In the result Demtschuk’s application is granted with costs and Rentokil Initial’s counter application is dismissed with costs.

ORDER

(a) The Trade Marks Register be rectified by the expunction from the said Register, Trade Mark Number 2003/0165 RENTOKIL in Class 37, reflecting Rentokil Initial 1927 PLC as the registered proprietor.

(b) Applicant (Michael Demtschuk t/a Rentokil Namibia Pest Control Services) is hereby directed to serve notice of the rectification on the second respondent.

(c) The second respondent is directed, on receipt of the notice of rectification and a duly completed prescribed application form, to rectify the Trade Marks Register accordingly.

(d) The counter application is dismissed.

(e) The first respondent (Rentokil Initial 1927 PLC) must pay the applicant’s costs of the application and counter application, including costs of one instructing counsel and one instructed counsel.

JUDGMENT

PARKER AJ:

[1] The application before us revolves around a dispute regarding the use of a trade mark Rentokil. The applicant (Demtschuk) has brought an application on notice of motion and seeks the relief set out in the notice of motion. The first respondent (Rentokil Initial) has not only moved to reject the application, it has also instituted a counter application. For the sake of clarity I shall refer to the parties as Demtschuk and as Rentokil Initial, where the context allows.

[2] In the application Demtschuk seeks the following relief:

‘CLAIM 1

1. Under section 33(1) of the Trade Marks in South West Africa Act 48 of 1973, for rectification of the Trade Marks Register by expunging from the Trade Marks Register the following trade mark:

1.1 Number 2003/0165, RENTOKIL, registered on 20 May 2010 in class 37 reflecting the First Respondent as registered proprietor.

2. Under section 33(4) of the Trade Marks in South West Africa Act 48 of 1973, directing the Applicant to serve on the Second Respondent notice of the rectification.

3. Under section 33(4) of the Trade Marks in South West Africa Act 48 of 1973, directing the Second Respondent to, on receipt of the notice of rectification and the prescribed application form, to rectify the Trade Marks Register.

CLAIM 2 (In the alternative to Claim 1)

4. Under section 36(1)(a) of the Trade Marks in South West Africa Act 48 of 1973, directing the Second Respondent to remove from the Trade Marks Register the following trade mark

4.1 Number 2003/0165, RENTOKIL, registered on 20 May 2010 in class 37 reflecting the First Respondent as registered proprietor.

CLAIM 3 (In the alternative to Claims 1 and 2)

5. Under section 36(1)(b) of the Trade Marks in South West Africa Act 48 of 1973, directing the Second Respondent to remove from the Trade Marks Register the following trade mark:

5.1 Number 2003/0165, RENTOKIL, registered on 20 May 2010 in class 37 reflecting the First Respondent as registered proprietor.’

[3] It follows that Claim 2 will be considered only if Claim 1 is refused; and Claim 3 will be treated only if Claims 1 and 2 are rejected – in that fashion. It is therefore to Claim 1 that I shall first direct the enquiry.

Application: Claim 1

[4] Mr Barnard represents Demtschuk, and Mr Michau SC Rentokil Initial. Both counsel referred to the court a bevy of authorities in support of their respective submission, and I am grateful to counsel for their commendable industry. I have distittled from those authorities the principles that are of assistance on the points under consideration.

[5] On the papers I make the following relevant and significant factual findings which are uncontradicted. Demtschuk adopted the trade name Rentokil in 1998 and has used that name continuously since then. Before adopting that name, Demtschuk made reasonable enquiries at the Companies Office, which must know, and the enquiries revealed that no entity had already been registered as trading under the name Rentokil in Namibia.

[6] I accept Demtschuk’s categorical, forthright and unchallenged statement that if any entity was using the name at that material time it would have known it. And what is more; there is sufficient proof – unchallenged – of the registration of the trade name Rentokil as a defensive name in terms of the Companies Act 61 of 1973 (as amended) in favour of Demtschuk. I hold that Demtschuk has established that it has used the trade name ‘Rentokil’ since 1998. I accept Demtschuk’s evidence that any reputation or goodwill attaching to the name Rentokil in Namibia is that which attaches to Demtschuk’s business, stemming from Demtschuk’s use of the name Rentokil and the promotion of it undertaken by Demtschuk over the years; and so, such reputation should be attributed to his business. Accordingly, I respectfully reject Rentokil Initial’s feeble attempt to deny that fact in its affidavit that there has been an indirect use by South African companies of Rentokil Services of Rentokil Initial in Namibia at the material time. In that regard Matador Enterprises (Pty) Ltd v Minister of Trade and Industry and Others 2015 (2) NR 477 (HC), relying on authorities, tells us that ‘[I]t is well established that it is impermissible for a deponent to give evidence in an affidavit on behalf of another where the latter does not file a confirmatory affidavit to confirm that evidence’.

[7] It follows reasonably and inevitably that the statements do not constitute admissible probative material. They rather constitute no more than inadmissible hearsay statements. They shall therefore form no part of the evidence placed before the court: they are irrelevant. These conclusions apply with equal force to statements made in affidavits, filed in support of Rentokil Initial’s case, deposed to by Mr P P F Fagan and Mr D J Lewis, on events that occurred before February 2013 and adumbrated in Demtschuk’s strike out application. I accept Mr Barnard’s submission that neither Fagan nor Lewis could have had first-hand knowledge of the fact deposed to. What is relevant and should form part of the evidence and should have great weight is therefore that Demtschuk has since 1998 to date propagated, through the Telephone Directory, the services it renders by using the name Rentokil – either on its own or in conjunction with other words – to come up with, for example, ‘Rentokil Pest Control & Windhoek Cleaning Services’, and ‘Rentokil Namibia Pest Control Services & Windhoek Cleaning Services’.

[8] Rentokil Initial puts great store by its contention that the trade mark Rentokil is well-known internationally and that there could have been a spill-over of the popularity of the mark from foreign countries (including South Africa) into Namibia. I have already held that the statements in support of this contention constitute inadmissible hearsay statements. In any case – and this is important – the fact that a trade mark is registered and used and is widely known in some foreign countries matters tuppence in this proceeding. That fact alone cannot, as Mr Barnard submitted, be a bar to its adoption and registration in Namibia, simply because the Act does not protect well-known foreign trade marks.

[9] Thus, on a fair conspectus of the evidence placed before the court, I hold that the prolonged, extensive and demonstrably largely undisturbed use over a long period of time the trade name Rentokil by Demtschuk has come to be regarded as identifying the distinctive services rendered by Demtschuk on an extensive and varied scale. When Rentokil Initial lodged its application to register the trade mark in 2003, the reputation and goodwill that Demtschuk’s use of the name Rentokil had chalked up was of such a degree that the registration of the trade mark by Rentokil Initial was likely to cause deception or confusion in the minds of those who utilize or are to utilize the services rendered by Demtschuk. Of course, the fact that an entity was the only one that has in the past made use of a name is not conclusive that it has come to be regarded as distinctive, but in the instant case the distinctiveness of the name Rentokil should be inferred; the name has no direct relation to the character or quality of the services rendered by Demtschuk. See Gonschorek and Others v Asmus and Another 2008 (1) NR 262 (SC), paras 69-78, passim. And what is more; the prolonged and extensive use of the name Rentokil in Namibia has caused the name to become distinctive in the minds of the clientelé of Demtschuk in distinguishing the services rendered by Demtschuk under the trade name from services rendered by competitors, as I have said.

[10] In his submission, Mr Michau SC, counsel for Rentokil Initial, rehearses some statements deposed to in the affidavit of Lewis to support the contention that in the period prior to 1998 and thereafter Rentokil South Africa had provided pest control services to South Africa and international companies ‘that have offices and premises in Namibia’ and further that there have been a ‘spill-over advertising in, for example, printed media that has been circulated within the Namibian territory’; and that ‘[T]his has been held to constitute use of a trade mark’.

[11] I have already rejected such of Lewis’s statements on the basis that they are inadmissible hearsay evidence. I have also rejected those statements for a different reason. It is that the Act does not protect what may be characterized as ‘well known foreign trade marks’; and so, the fact of foreign popularity alone cannot bar the adoption and registration of such trade mark in Namibia. (See para 8 of this judgment)