Most Read Contributor in South Africa, September 2016
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
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
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!
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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