Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd and others
 2 All SA 290 (SCA)
SUPREME COURT OF APPEAL
19 November 2010
LTC HARMS DP, JA HEHER, S SNYDERS, ZLL TSHIQI JJA and R
. Editor's Summary . Cases Referred to . Judgment .
 Intellectual property Counterfeiting Whether counterfeiting is possible without cloning Fact that the appellant
might not have produced a shoe bearing the particular trade mark did not mean that the respondent's shoes could not be
counterfeit, and lower court erring in requiring cloning as a prerequisite to making a finding of counterfeiting Test is that
the counterfeit had to be calculated to be confused with or, taken as being, the registered mark.
 Words and phrases "Protected goods" in definition of "counterfeiting" in section 1(1) of Counterfeit Goods Act 37 of
1997 having two meanings Second meaning covers any particular class or kind of goods which may bear a registered
trade mark, but has not yet been produced or to which it has not yet been applied with the authority of or by the
intellectual property owner.
The appellant was a German company specialising in sportswear and sports shoes. Its trade mark included the
word "Puma" and a leaping puma. In addition thereto, it registered a number of other device trade marks referred
to generically, as the "form strip device". That presented as a tapering curved stripe running from the upper left to
the lower right.
The respondent was the owner of a chain of retail shoe stores.
During September 2009, inspectors appointed under the Counterfeit Goods Act 3 7 o f 1 9 9 7 d e t a i n e d a
consignment of shoes imported by the respondent on suspicion that the shoes were counterfeit. The shoes bore
some or other stripe device on the side of the shoe which, according to the appellant, infringed one or other of its
form strip marks and were counterfeit. The respondent's main contention was that stripe devices were only
decorative and did not perform a trademark function.
Acting on the suspicion that the goods were counterfeit, the police applied for and obtained a search and seizure
warrant in terms of section 6 of the Act, and an inspector seized the goods and removed them to a counterfeit
depot. The respondent sought an order under section 7(4) of the Act, namely a declaration that the goods were not
counterfeit and for a consequent order that the goods be returned.
The application turned on two issues, the first of which related to cloning. The first respondent argued that unless
trademarked goods have been cloned they cannot be counterfeit within the meaning of the Act, and that cloning of
the mark itself and used on goods covered by the mark is not enough. The court below agreed with that submission
and granted an order in terms of section 7(4)(a) without finding it necessary to deal with the second issue namely
whether the shoes were counterfeit within the meaning of the definition of "counterfeiting" in section 1 of the Act.
Page 291 of  2 All SA 290 (SCA)
Held While the definition of "counterfeiting" in section 1(1) is not clear, what is clear is that it is not the same as
copyright or trade mark infringement it requires more. Examining the definition, the court concluded that
paragraph (a) was intended to deal with piracy while paragraph (b) was intended to deal with trademark
counterfeiting. In terms of the definition, the offence applies to "protected goods". The Court therefore had to
consider the meaning of "protected goods". It found that the term has two meanings, and that the second meaning
covers any particular class or kind of goods which may bear a registered trade mark, but has not yet been produced
or to which it has not yet been applied with the authority of or by the intellectual property owner. In other words,
the goods protected by paragraph (b) are not actual goods but notional goods, ie, goods to which the owner could
have applied the trade mark. Therefore, counterfeiting is possible without cloning and the fact that the appellant
might not have produced a shoe bearing the particular trade mark did not mean that the respondent's shoes could
not be counterfeit. The conclusion was that the court below erred in requiring cloning.
The next issue considered was whether the shoes were counterfeit. The answer had to be sought in paragraph
(b) of the definition of counterfeiting. In view of the common cause facts, the only remaining issue was whether the
marks applied to the respondent's shoes were the subject matter or an imitation of any of the appellant's
registered trade marks. The test was that it had to be calculated to be confused with or, taken as being the
registered mark. Finding that the test had been satisfied, the Court upheld the appeal.
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