LOSING THE NAME GAME

In a David-and-goliath battle a Namibian court ruled against a London-listed giant and ordered that its trademark registration in that country be expunged

Michael Demtschuk did everything by the book when he set up his business in Namibia in 1998. It’s just as well: he could not have known it at the time, but he was headed for a David-and-goliath showdown over his company’s name.

Demtschuk checked with the registrar of companies and found that no-one else had registered the name he wanted: Rentokil Namibian Pest Control Services. He even consulted the telephone directory, where he found an entry for “Rento-kill” — but when he called the number he was told the business had gone under and that he could use the name if he liked.

However, three years later, lawyers acting for Rentokil Initial 1927 Plc in Namibia and SA wrote to him. Their client was, they said, the biggest pest control contractor “in numerous countries”. Demtschuk was using its name without “authority or consent”, and he had to stop using the name “Rentokil Namibia” or face legal action.

For the next 13 years Demtschuk heard nothing further and went on as before. Then Rentokil lawyers returned to the fray, and the dispute ended up in court. It turned out that in those intervening years Rentokil Plc had applied to register the trademark “Rentokil”, but for some reason it was registered only after seven years.

Rentokil Plc now demanded that the word “Rentokil” be struck from the name of Demtschuk’s company, and that he be barred from “competing unlawfully” with Rentokil Plc. Demtschuk counterattacked, saying it was the Namibian trademark registration of Rentokil Plc that should be expunged.

Rentokil Plc subsequently appealed against Demtschuk’s high court victory, and that judgment has now been delivered.

Rentokil Plc’s case was that it owns the trademark and has developed a reputation and goodwill in Namibia. However, Demtschuk said his company has been the only operation in Namibia using the name Rentokil since 1998. Any reputation associated with the name is thus solely due to his use of it. When he began operating he knew of a German business with a similar name, but not one anywhere else.

To win the case, Rentokil Plc had to show that by 2003, when the company applied for registration of the trademark, it had already established a reputation in Namibia. And this is where it ran into trouble.

By that time, Demtschuk’s outfit was already dealing with a slew of clients in Namibia, including the biggest abattoir, government clients, the Namibia Scientific Society, people working in the property market and the hospitality sector. In 2003, he was thus “the only player in this segment of the market”, the court found.

The second problem was that Namibia’s hearsay rule is different from that in SA, and the information provided by Rentokil Plc officials was not accepted by the court. Even though it might be time for Namibia to change its hearsay rule and get in line with other jurisdictions, said the court, it would not help Rentokil Plc, whose evidence — given via company officials — was simply inadequate to prove the firm had a reputation and a protectable interest in Namibia.

No physical presence

As the company had done nothing to follow up its initial threats, the court said the inference had to be drawn that it did not then operate in Namibia, and not a single document was produced in evidence to show it had “direct contact” with any business in Namibia.

Whereas Rentokil Plc had no physical presence or reputation in Namibia, Demtschuk’s outfit had long owned the trademark and had been operating in that country for many years.

Giant Rentokil will surely still be in a state of disbelief: the court has ordered that its trademark registration must be expunged in Namibia, and has awarded costs against it.

To win the case, Rentokil Plc had to show it had already established a reputation in Namibia in 2003