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LAWSA Second Edition Vol 29
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Burrell TD Burrells South African Patent and Design Law 3ed Durban LexisNexis Butterworths 1999
Cases referred to in judgment
AM Moolla Group Ltd and others v The Gap Incorporated and others [2005]
3 All SA 101 (2005 (2) SA 412) (SCA) Referred to
291
Cadac v WeberStephen [2011] 1 All SA 343 (SCA) Distinguished
296
Gallo Africa v Sting Music [2011] 1 All SA 449 (SCA) Referred to
293
Puma AG Rudolf Dassler Sport v Global Warming (Pty) Ltd [2010] 1 All SA
25 (2010 (2) SA 600) (SCA) Referred to
292
Judgment
HARMS DP:
[1] The interpretation of the Counterfeit Goods Act 37 of 1997 remains contentious but since no visible steps
have been taken to solve the problems it remains our duty to interpret it as best we can.1
[2] The appellant, Puma AG Rudolf Dassler Sport ("Puma" for short), is a German company with an international
reputation in the field of sportswear, including sport shoes. It has, in addition to its Puma word and
Page 292 of [2011] 2 All SA 290 (SCA)
leaping puma device trade marks, a number of other device trade marks referred to generically, as the form
strip device. These are registered in class 25, usually in respect of clothing, footwear and headgear.
[3] The basic form strip device can, in very general terms, be described as a tapering curved stripe running from
the upper left to the lower right. If applied to the side of a shoe it conventionally runs from the upper portion
of the heel to meet the sole at the middle of the shoe. Two form strip marks (one of which is in issue in this
appeal) formed the subject matter of a recent trade mark infringement judgment of this court in Puma AG
Rudolf Dassler Sport v Global Warming (Pty) Ltd 2010 (2) SA 600 (SCA) [also reported at [2010] 1 All SA 25
(SCA) Ed].
[4] The respondent, Rampar Trading (Pty) Ltd, is the owner of a chain of retail shoe stores known as Dodo's. It
sells generally known branded shoes but also a budget line under its name mark and a device mark consisting
of a stylised letter D. The Dodo name has been known for about a century in relation to shoe stores and
shoes although the respondent's relationship with the original business is somewhat tenuous.
[5] During September 2009, inspectors appointed under the Act detained a consignment of shoes imported by
Rampar on suspicion that the shoes were counterfeit. The shoes, of which there were four types, bear some
or other stripe device on the side of the shoe which, according to Puma, infringed one or other of its form strip
marks and were indeed counterfeit. They also bear a Dodo trade mark. Rampar's main contention was that
stripe devices were only decorative and did not perform a trademark function
[6] Acting on the suspicion (enforced by an affidavit on behalf of Puma) 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 on 28 October 2009, and removed them to a counterfeit depot.
[7] Rampar filed an application in the Durban High Court seeking, first, the setting aside of the warrant and the
subsequent search and seizure. This was soon abandoned. It also 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.2 This was the case before the court below and, with its leave, the case before us.
[8] The application turned in this regard primarily on two issues. The first, to which I shall refer as the cloning
issue, can best be described with reference to a simplified example. A trade mark is registered in class 25 in
relation to clothing, shoes and headgear. The rights owner uses the trade mark on shoes only but the alleged
counterfeiter uses the identical mark on headgear or on a completely different type of shoe. One can also
conceive of a situation where the rights holder has not used the trade mark at all. In these cases the infringer
(because it will be trade mark
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infringement), although using the identical trade mark, did not clone goods bearing a trade mark of the rights
holder. Rampar 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. What this would have meant in the context of counterfeiting of money notes is that one cannot make
a counterfeit R300 note because the Reserve Bank does not produce one.
[9] The court below agreed with this submission of Rampar's counsel 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. This depends on whether the
shoes bore a sufficiently identical trade mark to that of the registered mark. It should be noted that one of
the four types has been released from detention by the inspectorate on this ground and that leaves for
consideration the other three.