C OF A (CIV) NO.17/2006
IN THE APPEAL COURT OF LESOTHO
Held at Maseru
In the matter between: -
AFRICAN METHODIST EPISCOPAL
CHURCH (AFRICA) First Appellant
L A SEKOKOTOANA Second Appellant
T V KHUMALO Third Appellant
T M NOOKAZI Fourth Appellant
and
18th EPISCOPAL DISTRICT
AFRICAN METHODIST EPISCOPAL CHURCH Respondent
CORAM:
RAMODIBEDI, JA
GROSSKOPF, JA
MELUNSKY, JA
SUMMARY
Court a quo granted respondent an order interdicting appellants from using the words African Methodist Episcopal, in that order, or in any other order resembling the name of the respondent - appeal - principles of passing off-names found to be confusingly similar - requirements for passing off met.
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JUDGMENT
[1] The respondent in this appeal was substantially successful as applicant in the court a quo. It brought an urgent application against the appellants who were the respondents in the court a quo. Counsel in their heads of argument continued to refer to the parties as applicant and respondents respectively, as in the court a quo, and I shall do likewise.
[2] The court a quo granted the following order:
"Respondents be and are hereby restrained from using or presenting themselves in Lesotho within the jurisdiction [of] this court, under the name, style or make-up of African Methodist Episcopal Church (Africa), which is similar to the name of the applicant as this may reasonably be confusing to the members of the applicant, or to the public in Lesotho. Further respondents are interdicted from including the use of the words African, Methodist and Episcopal, in the name of the entity organizing or holding the intended meeting;
Respondents are interdicted from in anyway using the words African Methodist Episcopal, in this order, or any other order which may resemble the name of the applicant;
Respondents are directed to pay eighty percent of the costs". The respondents are appealing against this order.
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[3] It was part of the applicant's case in the court a quo that the first respondent's logotype, like its name, was similar to that of the applicant and therefore also likely to cause contusion. The court a quo however held that the respective logos of the parties are so different from one another that they are unlikely to cause confusion. The applicant abides by this decision.
[4] The applicant is the 18th Episcopal District of the African Methodist Episcopal Church. It is duly registered as a society in Lesotho. The African Methodist Episcopal Church was established in the United States of America ("USA") in 1860 and in Lesotho in 1898. The different Episcopal Districts are affiliated to and form part of the African Methodist Episcopal Church in the USA, which is regarded as the mother church. The 18th Episcopal District includes not only Lesotho but also Botswana, Swaziland and Mozambique.
[5] It is not in dispute that the applicant has 77 congregations or churches in Lesotho with more than 700 members who are served by 46 pastors and 104 preachers. The respondents deny that the applicant has immovable property to the value of M31 150 000.00, but do not dispute that the applicant holds extensive rights to occupation of immovable property, and that the applicant has erected church buildings and other buildings and facilities to cater inter alia for 30 schools with nearly 7000 students. The respondents in fact admit that the applicant is "extensively established" in Lesotho. It is further not denied that the applicant receives approximately M269 000.00 per annum from rental of its commercial buildings, from donations,
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contributions and tithes from the public and its members. The respondents actually disclosed that the applicant also receives an annual "budget allocation" from the mother church in the USA. The respondents further admit that the applicant is one of the biggest churches in Lesotho.
[6] The first respondent is a peregrinus with its head office in Soweto in South Africa. It is a religious organisation named African Methodist Episcopal Church (Africa), but counsel for the applicant points out that there is no proof that such a church has been registered in South Africa. The first respondent alleges that it was established in South Africa on 24 August 1980 when it broke away from what it describes as the "applicant's American controlled church in South Africa". The first respondent says that after an existence of 25 years in South Africa it resolved to extend its operations to other African countries, starting with Lesotho. At a meeting held in December 2005 the first respondent adopted a resolution to launch the church in Lesotho under the name African Methodist Episcopal Church (Africa). The official inauguration was scheduled to take place on 26 and 27 August 2006 in Maseru.
[7] The second respondent used to be a pastor of the applicant at the Agnes Ball AME Church. He was released from his responsibilities as pastor in April 2005, whereupon he was appointed as first minister and first supervisor of the first respondent in Lesotho. The second respondent deposed to the answering affidavit on behalf of all the respondents. 1 shall assume that he was authorized to do so, although
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this does not appear from his opposing affidavit and its heading, or from the resolution authorizing him to "institute motion proceedings" against the applicant and another.
[8] It is the applicant's case that the second respondent, during his service with the applicant, became intimately acquainted with the affairs of the applicant. The second respondent has since May 2005 openly joined ranks with the first, third and fourth respondents and they are jointly promoting the establishment of the first respondent as a church in Lesotho. The applicant maintains that by using the name African Methodist Episcopal Church (Africa) for their church in Lesotho the respondents are acting to the detriment and prejudice of the applicant. The applicant submits that the name which the first respondent intends using in Lesotho is virtually the same as the name which the applicant has been using since 1898 in Lesotho. According to the applicant the only real distinction between its name and that of the first respondent is that the first respondent's name has the word "Africa" in brackets added after the name African Methodist Episcopal Church. The applicant submits that the respondents are using this name in Lesotho with the intention to mislead the public. By doing so they make use of the good reputation and custom established by the applicant over many years in Lesotho for their own benefit. It is the applicant's contention that this is a case of passing off.
[9] The requirements for passing off were considered by this Court in the case of Hyperama (Pty) Ltd v OK Bazaars (1929) Ltd LAC (1990-1994) 97. In that case Trengove JA at 103 C-E quoted with
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approval the following passage from Capital Estate and Others v Holiday Inns Inc and Others 1977 (2) SA 916 (A) at 929C:
'The wrong known as passing off consists in a representation by one person that his business (or mechandise as the case may be) is that of another or that it is associated with that of another, and in order to determine whether a representation amounts to a passing off, one enquires whether there is a reasonable likelihood that members of the public may be confused into believing that the business of one is, or is connected with, that of another."
In Lesotho Congress for Democracy v Basutoland Congress Party
LAC (1995-1999) 514 this Court accepted that there may be cases in which the law in regard to passing off may be extended to protect political parties. In the South African case of Old Apostolic Church of Africa v Non-White Old Apostolic Church of Africa 1975 (2) SA 684 (C) the court held that the principles of passing off were applicable to a case of a non-trader and granted the applicant church an order restraining the respondent church from using a name similar to that of the applicant church. That case is indeed on all fours with the present case.
[10] The respondents opposed the applicant's application in the court a quo and denied that there had been any attempt in passing off. The respondents in particular denied that the names of the two churches are similar and pointed out that the applicant's name is preceded by the words "18 Episcopal District". It is the respondent's case that there is accordingly no prospect of any confusion between the two names.
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[11] The prefix "18th Episcopal District" might be used to distinguish the applicant from other episcopal districts of the church elsewhere in the world but it is not the name by which the church is known to its members and the general public in Lesotho. The respondents in fact admitted the following statements made by the applicant in its founding affidavit:
"Applicant is known to its members and the general public as the AME church."
"....the Applicant is well known as the AME church or the African Methodist Episcopal Church."
It is instructive to note that the first respondent in its invitation to His Majesty the King to its official inauguration refers to itself as the "AME Church (Africa)", notwithstanding that it is common cause that the applicant is well known in Lesotho by the name of AME church.
[12] The respondents submit that there is a dispute of fact on the papers, more particularly on the question whether the names of the two churches are so similar as to cause confusion. The respondents point out that it is trite law that-
"where there is a dispute as to the facts a final interdict should only be granted in notice of motion proceedings if the facts as stated by the respondents together with the admitted facts in the applicant's affidavits justify such an order .... Where it is clear that facts, though not formally admitted, cannot be denied, they must be regarded as admitted."
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(Stellenbosch Farmers' Winery (Pty) Ltd v Stellenbosch Winery (Pry) Ltd 1957 (4) SA 234 (C) at 235 E-G).
It was however subsequently held in the well known case of Plascon - Evans Paints v Van Riebeeck Paints 1984 (3) SA 623 (A) at
634H-635C that the second sentence in the above quoted formulation requires some clarification and qualification. One such qualification
mentioned by the court in the Plascon - Evans case at 634 I is that -
"[i]n certain instances the denial by respondent of a fact alleged by the applicant may not be such as to raise a real, genuine
or bona fide dispute of fact."
[13] The applicant's allegation of a likelihood of confusion in the names is denied by the respondents but that denial does not in my view raise a real dispute of fact as suggested by the respondents. It is a bare denial that can be dismissed on the papers. (See Bantu Football Club v Lesotho Football Association and 15 Others, C of A (CIV) No.22/2001, a case of this court dealing with passing off.) It follows in my view that the applicant has shown that the introduction of another church with virtually the same name in Lesotho is likely to cause confusion and mislead members of the applicant and the general public to believe that the first respondent is merely a branch of the applicant or in some other way connected with the applicant.
[14] The respondents further disputed the allegation that the first respondent's name was calculated to deceive and submitted that the applicant has therefore failed to prove that the first respondent is using
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its name with the intention to deceive. The simple answer is that the applicant relies on the fact that the names are confusingly similar and that it is not necessary for the applicant to prove an intention to deceive as part of the passing off.
[15] Counsel for the respondents submitted that there is no evidence to prove actual confusion in the present case. Counsel relied on the case of Adcock-Ingram Ltd v Lennon Ltd 1982 (1) SA 862 (T) in support of this submission, but the learned judge in that case held as follows at 870 B-C and E:
"When goods are dealt with by a specialized profession the existence or absence of evidence of actual confusion on the part of the profession is, I consider, of greater significance in considering whether confusion is a likelihood or not than would otherwise be the case."
"It is not necessary for me to hold that in every case similar to the present one, in the absence of evidence by doctors and
pharmacists of actual confusion, the Court would be precluded from inferring the probability of such deception or confusion".
In my view it was not necessary for the applicant to produce any evidence of actual confusion in the present case where we are not dealing with the likelihood of confusion in respect of goods of a kind which are not normally sold to the general public for consumption or domestic use.
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[16] Counsel for the respondent further submitted that the court a quo should have compared the whole get-up of the applicant with the whole get-up of the first respondent, as was done in the case of Stellenbosch Farmers' Winery, supra. It should however be borne in mind that that case dealt with the question whether the marketing of sparkling wine by one party in a particular get-up so closely resembled that used by the other party as to be calculated to cause confusion. In the present case we are not concerned with the get-up but simply with the name of the church. Ordinary members of a church do not in any event look at logos, they have regard to the name of their church.
[17] I am of the view that the applicant has made out a proper case of passing off on the papers and that the applicant is entitled to relief. I do however consider that the order of the court a quo is too wide and that it requires some qualification and amendment. Counsel for the applicant agreed that the order set out below would suffice. The following order is accordingly made:
The appeal is dismissed with costs, such costs to be paid by the appellants jointly and severally.
Paragraphs (a) and (b) of the order of the court a quo are deleted and substituted by the following order:-
"Respondents are restrained and interdicted from using the name African Methodist Episcopal Church (Africa) or any other name which is so similar to that of the applicant as to
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be likely or calculated to lead to confusion."
F H GROSSKOPF
JUDGE OF APPEAL
I agree
M M RAMODIBEDI
L S MELUNSKY
Delivered at Maseru on 4th April 2007.
For the Appellant : Mrs V V Kotelo
For the Respondent : Mr Buys
