Sun International has secured a ruling requiring Times Square Hotel (Pty) Ltd to change its registered name after South Africa’s Companies Tribunal found that the name could create confusion with the hospitality group’s Time Square trademark.
The tribunal concluded that the similarity could reasonably cause members of the public to believe that the hotel business was connected to Sun International.
The decision was handed down on 1 September by presiding member Richard Bradstreet following an application brought by Sun International against Times Square Hotel and the Companies and Intellectual Property Commission (CIPC).
CIPC was included in the proceedings only in relation to possible enforcement measures if the hotel failed to comply with the tribunal’s order. Sun International did not seek costs against the commission.
Sun International operates the Time Square casino and entertainment complex at Menlyn Maine in Pretoria. The hotel within the complex changed its name from The Maslow Time Square to Time Square Hotel on 5 February.
The separate Times Square Hotel company was registered on 19 August 2024, with its registered office in Umhlanga, Durban.
Tribunal finds one-letter difference insufficient
Sun International argued that the company’s name was too close to its registered Time Square trademark and could give customers the false impression that the businesses were commercially linked.
The trademark is registered in classes 41 and 43, covering services including food and beverages and temporary accommodation. The relevant applications were filed in April 2013. Sun International also owns two composite Sun Time Square trademarks registered in 2016.
In considering the dispute, the tribunal focused on the overall impression created by the two names rather than the minor spelling difference between them.
The tribunal found that “Times Square” was the dominant and memorable part of the respondent’s name. It also determined that “Time Square” and “Times Square” are close to homophones in ordinary speech.
The addition of a single “s” was therefore not considered enough to distinguish the two names.
The tribunal’s reasoning was that consumers often rely on an imperfect recollection of a business name rather than examining each individual letter. As a result, the similarity could create a substantial risk of mistaken association.
The ruling follows a similar outcome in September 2022, when Sun International successfully objected to the names Times Square Ballito, Times Square PMB and Times Square Cape. The tribunal found in those matters that adding an “s” did not adequately separate the names from the Time Square trademark.
Company given three months to adopt a new name
The latest case proceeded without participation from Times Square Hotel.
Sun International filed its application on 13 July and served the company by email. A deputy sheriff also delivered the documents to the registered address in Umhlanga.
Although the person receiving the documents reportedly said that the company was unknown at the address and that another business occupied the premises, the tribunal ruled that service had nevertheless been properly effected.
The company was required to respond by 13 August but failed to do so. Sun International subsequently applied for a default order on 19 August.
The tribunal also noted that the parties had previously communicated about the disputed name. Correspondence and telephone discussions took place between the company’s director and Sun International representatives from September last year through March this year, during which the company was repeatedly asked to change its name.
The tribunal ultimately found that Times Square Hotel’s registered name did not comply with the Companies Act.
The company has three months from the date it is served with the order to adopt a compliant name and amend its memorandum of incorporation. If it fails to do so, CIPC must replace the company’s name on the register with its registration number until a compliant name is adopted.
No costs order was made against the company.