Today I became the proud owner of the following legal letter:
SOUTH AFRICA: Objection to the registration of the FUCKSENTECH.CO.ZA Internet domain name and possible passing-off and unlawful competition thereof by SHAUN DEWBERRY
SOUTH AFRICA: Trade Mark Registration “SENTECH DEVICE” in class 38 ino Sentech Limited – Registration Numbers 1994/03902
SOUTH AFRICA: Trade Mark Application “SENTECH AND DEVICE” in class 38 ino Sentech Limited – Application Number 2001/01471
SOUTH AFRICA: Trade Mark Application “SENTECH” in class 38 ino Sentech Limited – Application Number 2001/01469
We act on behalf of the Sentech Limited, a company duly incorporated in accordance with the laws of the Republic of South Africa.
Sentech began operations in 1992 under the auspices of the SABC, as a signal distributor for all transmissions related to the SABC. This mandate included services provided to M-Net, Radio 702, Radio Ciskei, Transkei and Bophuthatswana Broadcasting Corporation. In August 1995, the Independent Broadcasting Authority (IBA) recommended that Sentech be split from the SABC and that Sentech become a public company, with all signal distribution facilities of the former TBVC states and staff also being transferred to Sentech. The IBA report was approved by Parliament in March 1996 and a Sentech Act to implement these measures was adopted by Parliament in November 1996.
Sentech has progressed beyond traditional broadcasting services and owns and operates satellite transmission systems making use of Intelsat and PanAmSat capacity to provide linking for terrestrial transmitter networks and direct satellite broadcasting services. Satellite transmission for direct-to-user reception is provided in analogue PAL format for public broadcasting services to achieve lower reception cost and in digital format to service digital receivers and provide communications channels used by business and public enterprises for corporate communications, information distribution and distance education/training.
In May 2002, Sentech was granted two telecommunications licenses, allowing it to move into international telephony and multimedia communications. The International Telecommunications Gateway license allows Sentech to carry international traffic on behalf of other licensed operators. The multimedia services license enables the company to deliver e-commerce, Internet, broadband and value-added telecommunications services direct to consumers and businesses.
As a result of the above, Sentech has established itself as one of the leading companies in South Africa providing, amongst others, large-scale wireless Internet and data connectivity solutions. The SENTECH trade mark is well-known both in South Africa and internationally, and includes considerable goodwill and reputation which vests exclusively in Sentech.
It has recently been brought to our client’s attention that you have registered a Country-Code Second Level domain name, FUCKSENTECH.CO.ZA incorporating our client’s SENTECH trade mark.
The use of our client’s SENTECH trade mark in this manner has not been authorized by our client, and in the light of our client’s trade mark rights, your actions amount to:
1. Passing-off in terms of South African Common Law:
Your registration and use of the FUCKSENTECH.CO.ZA domain name will confuse the public into thinking that our client is associated with or, endorses your good and services, which it clearly does not.
In the UK case of British Telecommunications plc and Others vs One in a Million and Others, heard before a Supreme Court of Appeal, it was ruled that:
” … the placing on a register of a distinctive name … makes a representation to a person who consults the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in that name … ”
The court further held that the registration of a domain name including a trade mark to which goodwill is attached, is an erosion of the exclusive goodwill in that mark, which damages or is likely to damage the proprietor of that trade mark. The registration of such a domain name therefore amounts to trade mark infringement and passing off.
2. Trade mark infringement:
Our client further contends that your registration and use of the FUCKSENTECH.CO.ZA Internet domain name is an infringement of its trade marks rights in terms of Section 34(1)(c) of the Trade Marks Act No. 194 of 1993 which provides as follows:
“34(1) The rights acquired by registration of a trade mark shall be infringed by-
(c) the unauthorized use in the course of trade in relation to any goods or services of a trade mark which is identical or similar to a trade mark registered, if such trade mark is well known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception: Provided that the provisions of this paragraph shall not apply to a trade mark referred to in section 70(2).”
Section 34(1)(c) makes it possible for our client to take steps against you where your use is likely to take unfair advantage of, or be detrimental to the distinctive character of our client’s trade mark. Such a provision does not require confusion or deception of the public and accordingly relates to dissimilar goods and services.
3. Unlawful Competition
Your registration of the FUCKSENTECH.CO.ZA domain name amounts to unlawful competition in that your wrongful conduct has, and is, limiting our client’s right to exploit its existing and potential goodwill and reputation in and to the “SENTECH” name. In the case of Geary & Son (Pty) Ltd v Gove 1964 1 SA 434 (A) at 441A the Honourable Court identified unlawful competition to be:
“… the right upon which the Plaintiff may be presumed to rely is its right to attract custom. The interference alleged would, on that basis, appear to be a wilful misrepresentation and dishonest conduct on the part of the Plaintiff’s competitor by which customers or potential customers have been or will be induced to deal with the competitor rather than itself.”
In the light of the above our client is entitled to approach a court of competent jurisdiction for an order:
1. Compelling you to immediately cease all use of or reference to our client’s SENTECH trade mark in any manner whatsoever; and
2. That you pay restitution for any damages that our client may have suffered.
3. That you pay for all legal cost on an attorney and client scale.
Our client has instructed us to call upon you, as we hereby do, to immediately:
1. Transfer the domain name FUCKSENTECH.CO.ZA to our client;
2. Cease all use of or reference to our client’s SENTECH trade mark in any manner whatsoever;
3. Furnish our client with a written undertaking that you will never again in the future make unauthorised use of our client’s trade mark/s confusingly similar to our client’s trade mark in any manner whatsoever; and
4. Furnish us with your confirmation that you have complied with the above demands.
We regard this matter in a serious light and you are requested to comply with our demands within 48 (FORTY EIGHT) hours from date of this letter, failing which appropriate relief, including a cost order will be sought without further notice to you. We trust that this course of action will not be necessary.
We look forward to your urgent attention in this regard.
JOHN & KERNICK
Telephone: +27 11 695 3636
Facsimile: +27 11 315 7444