In 2018, the Namibian High Court issued a decision in favour of the Applicants, Southern Sun Africa (First Applicant) & Southern Sun Hotel Interests (Pty) Limited (Second Applicant), on the basis of passing-off and copyright infringement, against Sun Square Hotel (Pty) Limited (Respondent), a Namibian company.
The First Applicant, Southern Sun Africa, a Mauritian company, is the proprietor of trade mark registrations for the SUN SQUARE logo trade mark (below) in South Africa. The Second Applicant, Southern Sun Hotel Interests (Pty) Limited, owns the copyright in the SUN SQUARE logo, as an original artistic work. The SUN SQUARE logo has been used in South Africa under licence from the First Applicant for many years in relation to hospitality services.
In mid-2015, the Applicants became aware that the Respondent, Sun Square Hotel (Pty) Limited, was operating a hotel in the neighbouring country, Namibia, under the name SUN SQUARE, using an identical logo on its hotel signage, branding and guest amenities. Images of the hotel and branded guest amenities appear below:
The First Applicant sought to restrain the Respondent’s unauthorised use of the SUN SQUARE word and logo marks, while the Second Applicant alleged the Respondent had infringed the copyright in the SUN SQUARE logo.
The First Applicant did not operate a SUN SQUARE hotel in Namibia, but argued that it had established a reputation in Namibia through cross-border trade and spill-over advertising. The evidence included documented examples of use of the mark in South Africa and a guest list indicating that some 2000 Namibian citizens had stayed at the First Applicant’s hotels in South Africa. The Second Applicant also successfully established its copyright in the SUN SQUARE logo.
The High Court found that the Respondent’s unauthorised use of the SUN SQUARE word and logo marks amounted to passing-off which, the Court stated resulted, or was calculated to result, “in the improper filching of the First Applicant’s trade mark, an improper infringement of its goodwill and may cause injury to the First Applicant’s trade reputation”.
The High Court consequently granted the interdict restraining the Respondent from passing itself off as the First Applicant. An interdict for copyright infringement was also granted and the Second Applicant was awarded an enquiry into reasonable royalties and additional damages.
The Respondent’s appeal to the Namibian Supreme Court was refused.