Just what does international retail giant Walmart Apollo have in common with a small business operating from a container in Kwasa Village informal settlement outside Springs, east of Joburg?
Answer: absolutely nothing — other than their name, that is.
In March 2021, Walmart Apollo became aware that the Companies & Intellectual Property Commission (CIPC) had approved a new registration: Walmart Africa Pty Ltd. Quick to protect its name, Walmart Apollo lodged an objection with the CIPC and served a notice on Walmart Africa.
A representative of Shaiful Islam, co-owner of Walmart Africa, accepted the notice, but the Kwasa Village company did nothing further and was not represented when the matter was argued before the companies tribunal.
The tribunal member who heard the dispute, Diane Terblanche, said the main question was whether Walmart Africa’s name satisfied the requirements of the Companies Act: according to Walmart Apollo, it was inconsistent with the law.
Walmart Apollo listed its many trademark registrations in South Africa and gave a brief history of the company. Founded in 1962 in Rogers, in the US state of Arkansas, it was officially incorporated as Walmart Stores in 1969 and the following year became a publicly traded company. It was listed on the New York Stock Exchange in 1972 and by 1980 it had opened 276 stores across the US.
Walmart Africa’s registered address was an informal settlement outside Joburg, where the new company operated a retail outlet ‘selling fast-moving consumer goods from a 40-foot commercial shipping container’
By 2000, it had almost 4,000 stores and clubs worldwide and had launched its online store. In 2011, it expanded into South Africa through its acquisition of Massmart. Now in this country for more than 10 years, it constantly uses its trade marks, and is entitled to protect its goodwill and reputation, it said.
When Walmart Apollo discovered the registration of Walmart Africa it instructed a commercial investigator to find out whether the new company was trading. That’s when it emerged that Walmart Africa’s registered address was an informal settlement outside Joburg, where the new company operated a retail outlet “selling fast-moving consumer goods from a 40-foot commercial shipping container”.
The sheriff found the container when he went to serve Walmart Apollo’s letter notifying it of the pending action. But as Islam wasn’t around, the letter was served on an employee who said Islam was “out of South Africa and will only be returning after five months”.
Confusing the public
During the hearing, Walmart Apollo claimed the local outfit’s name was identical to that of the international conglomerate and so its name should be cancelled. The services offered by Walmart Africa were so similar to those offered by Walmart Apollo that it was likely to result in deception and/or confusion and amounted to trademark infringement, it said.
Furthermore, Walmart Apollo hadn’t authorised the use of its trademarks by the other company, and the continued use of the name was likely to lead the public to believe there was “some association and/or connection” between the two, “where there is in fact none”. In addition to this, Walmart Apollo argued that the name of the local outfit should not have been approved in the first place.
And, Walmart Apollo said, since the group had “absolutely no control whatsoever over the quality and type of goods sold” and the services offered by Walmart Africa, its own business and name could be injured by the continued use of the same name by the other company.
Terblanche said she agreed there was a reasonable likelihood that the public could be confused by the side-by-side use of the names, as the nature of the two businesses was similar. It was also possible that the “visual, phonetic and conceptual similarities” between the names would mislead or confuse the public into believing there was an authorised connection between them, when that was not the case.
Terblanche found that Walmart Africa was in breach of the Companies Act and that the name couldn’t be allowed to continue on the register. It had to be changed and Walmart Africa was given 60 days to file evidence that it had officially done so.
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