Although brief, Judge Tolmay’s judgment in the case of Helen Els and Ceroc Dance South Africa v Lezelle Pretorius (North Gauteng High Court, 25 June 2015) is interesting for a number of reasons.
The first is that the judgment deals with the relatively rare issue of passing-off through the use of a similar slogan. In this case, a dance school called Ceroc has a registration for the trade mark Ceroc in class 41 for educational services. This trade mark is used in conjunction with the slogan “Add some flair to your sokkie” (a “sokkie” is an Afrikaans word for a type of dance). Pretorius had been a franchisee of the dance school but the franchise agreement had come to an end. Although Pretorius had continued to make some use of the name Ceroc (see later), the passing off issue related more to her use of the phrase “Add flair to your sokkie” (she dropped the word “some”) in conjunction with the new name of her business, Modern Jive Jazz Club.
The judge disagreed with Pretorius’s claim that the slogan “Add some flair to your sokkie” was merely a secondary brand, and that its use was relatively inconspicuous. The judge made the point that there had been considerable use of the slogan (together with the name Ceroc), and that the sales and advertising expenditure figures for the business were quite good. The slogan “Add some flair to your sokkie” therefore enjoyed a reputation and Pretorius’s use of an almost identical slogan was likely to cause confusion, especially as she was an ex-franchisee of Ceroc. There was, therefore, passing-off.
The judge said this:
”The consumer will be unlikely to distinguish between the respondent’s past activities as part of the Ceroc business and the respondent’s business, as currently operated, which is not part of the Ceroc business... .The applicants are likely to suffer damages which may result from the dilution of the distinctive character of the mark Ceroc and the phrase ‘Add some flair to your sokkie’, or a diversion of custom from the applicants’ business to the respondent’s business.”
The second interesting aspect of the judgment is that it deals with the rather rare issue of contempt of court in the context of trade mark infringement. The parties had been to court before, and the court in the earlier proceedings had issued an order requiring Pretorius to stop using the trade mark Ceroc. Although Pretorius had moved on to a new trade mark, Modern Jive Jazz Club, and although she had seemingly tried to end all use of the trade mark Ceroc, the dance school was not satisfied that she had done enough. Pretorius did, for example, on occasion refer to the fact that her new business was “affiliated with Ceroc”. There were also some references to her connection with Ceroc on the internet.
The judge accepted that some of these uses of the trade mark Ceroc were historical and that they would not happen again. When it came to online uses, which included a reference to Ceroc on a Facebook page and various online listings, the judge seemed to have some sympathy for Pretorius. The judge said: “This clearly illustrates how difficult it is to remove one’s presence from the internet.”
One unusual example of online usage related to the fact that there was a link to Pretorius’s business on the website www.ceroc.com. This is, in fact, the website of a UK company that owns the UK trade mark registration for Ceroc, but has no rights to the trade mark in South Africa. This UK company is also Pretorius’s new franchisor. The judge made the point that Pretorius had taken legal advice on the issue of this website, and that she had been advised that the link didn’t contravene the court order, seemingly because the website was outside of the court’s jurisdiction
The judge concluded that Pretorius had not been in contempt of the earlier court order. The judge made the point that, in order for there to be contempt, there must be a “wilful and mala fide refusal or failure to comply with an order of court”. In this case, there was no evidence that Pretorius had wilfully and in bad faith disregarded the earlier order.
The final reason why the judgment is interesting is because it highlights the importance of using experts in a specialist field like trade marks. Pretorius had applied to have Ceroc’s trade mark registration cancelled. She had, however, forgotten to take the elementary step of joining the Registrar of Trade Marks as a party to the proceedings – the Registrar must be joined as a party in any application to rectify the register, notwithstanding the fact that the Registrar never gets involved and simply agrees to abide by the court’s decision. As Pretorius had failed to join the Registrar, the application for rectification could not even be considered. A rookie error indeed!