South Africa's Eastern Cape hots up in latest passing off decision

South Africa: In the case of Fire Logic (Pty) Ltd (Fire Logic)  v Logic Group Africa (Pty) Ltd t/a Firelogik (Logic Africa), the Eastern Cape division of the High Court found this week that Logic Group had passed off its services by using the name “Firelogik”. The court interdicted them from using the name in the Cape provinces and ordered them to pay costs. This case illustrates the need for brand owners to have a zero-tolerance approach and be vigilant about trade mark misuse by others, to protect themselves with registered trade marks and use the courts to enforce where necessary.

Background:

Fire Logic has been in existence since 1994 and has developed a substantial reputation in its brand for fire protection and maintenance services. The dispute began in 2016 when the Logic Africa applied for a license using the name FIRELOGICS. This led to an exchange between the parties and Logic Group responded by stating that they were changing their name, but it never fully did so.

By 2019, Fire Logic realised that this nagging fire had only been partially doused when it received erroneous purchase orders from the retail store Pick ‘n Pay. Further correspondence was entered into, but it became clear, by August 2021, that the only way Fire Logic could stop the use of such a similar name, was to approach the court, which it did. It sought a final interdict and costs.

Logic Africa responded sometime later by taking down its website and opposing the applicant on the basis that a reputation could not be shown in the name and the no confusion was likely. It also claimed that the relief was then moot because of its name change in 2016.

Findings:

In a considered judgment, Acting Judge Bands found that FIRELOGIC was a fancy name and/or deserving of protection as a symbol of the goodwill attached to it. Then judge also found sufficient similarities in the name for there to be a likelihood of confusion, especially as the two parties operated in the “common field of activity” and in competition with one another.

 

For attorneys working with the nuances of application proceedings in South Africa, the judge  re-affirmed that bare denials in affidavits are not sufficient to create disputes of fact under the Plascon-Evans rule. It is also an example of a situation where an final interdict can be granted even where the dispute is alleged to be moot.

 

These findings lead to a decision against the Logic Africa.

 

Comment:

 

The analogy between a fire that does not want to extinguish and the facts of this case that took seven years to conclude (absent an appeal) are useful in illustrating the need for effective trade mark management and protection from the outset. This means that when a fire ignites, to continue the analogy, one must make sure it is dealt with comprehensively at the start. This means a zero-tolerance approach, continued vigilance, the use of undertakings and the need to apply for trade mark registrations (for swifter, less costly and more predictable outcomes, as well as the possibility of damages in the form of a reasonable royalty). In these types of cases, punitive costs may also be a handier deterrent – it should not be possible for seven years of such misuse - something for lawmakers to consider in future.