the definition of counterfeiting would do the same, although it did not do so in the same sequence.
[17] The next issue concerns the meaning of "protected goods". It has two meanings. First, it means
"(a)
goods featuring, bearing, embodying or incorporating the subject matter of an intellectual property right with
the authority of the owner of that intellectual property right, or goods to which that subject matter has been
applied by that owner or with his or her authority."
Applied to trade marks, protected goods are genuine goods that feature the registered trade mark. With
reference to the other provisions of the Act, it simply intends to protect cloning of goods incorporating the
relevant IPR.
[18] The second meaning is
"(b)
any particular class or kind of goods which, in law, may feature, bear, embody or incorporate the subject
matter of an intellectual property right only with the authority of the owner of that intellectual property right, or
to which that subject matter may in law be applied, only by that owner or with his or her authority, but which
has not yet been manufactured, produced or made, or to which that subject matter has not yet been applied,
with the authority of or by that owner (whichever is applicable)."
[19] Shorn of verbiage paragraph (b) 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 IP 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. It means that counterfeiting is possible
without cloning and the fact that Puma may not have produced a shoe bearing the particular trade mark does
not mean that Rampar's shoes could not be counterfeit.
Page 296 of [2011] 2 All SA 290 (SCA)
[20] Confirmation of the fact that the Act contemplates counterfeiting of notional goods is also to be found in
section 3(2)(b), which deals with the information a complainant has to supply when laying a complaint. It
concludes by requiring a specimen of the relevant protected goods where the IPR "that subsists in respect of
or has been applied to protected goods contemplated in paragraph (a) of the definition of 'protected goods' in
section 1(1)". Significantly, it does not require a specimen in the case of para (b) because one would imagine
there cannot be one.
[21] Counsel for Rampar submitted that in spite of the wide wording, paragraph (b) should be read to conform with
Trips which, it was suggested, does not require such protection. This, he said, is supported by a statement by
the which was quoted with approval by this court in Cadac (Pty) Ltd v WeberStephen Products Company and
others [2010] ZASCA 105 [reported at [2011] 1 All SA 343 (SCA) Ed] where it was said that:
"counterfeit cases involve an infringer attempting to reproduce and substitute for the goods (not just the
trademark) of the trademark owner."
A study sponsored by the New Zealand government, for instance, states as follows in this regard:9
"The term 'counterfeiting' is generally understood to mean the unauthorised manufacture and distribution of copies of
such goods and works which are intended to appear to be so similar to the original as to be passed off as genuine
examples. This includes use of famous brands on clothing not manufactured by or on behalf of the owner of the trade
mark, and exact copies of CDs containing music or software, which are traded in a form intended to be
indistinguishable to ordinary consumers from the genuine product."
Counsel also relied on a statement in Webster and Page,10 submitting that the authors were of the view that
paragraph (b) was intended to protect only famous foreign marks that have not been registered and goods
that have been produced elsewhere but not in South Africa.
[22] Whatever the general understanding of the term "counterfeiting" or the motive behind the anticounterfeiting
Trips provisions, the limitation is not to be found in Trips or the clear wording of the Act. 11 The extract was
quoted in Cadac v WeberStephen (supra) in another context to make a different point. As far as Webster and
Page are concerned, I believe that counsel misread the learned authors.
The second issue: are the shoes counterfeit?
[23] It follows that in my judgment the court below erred in requiring cloning. It is now necessary to consider the
second question, namely whether the shoes were counterfeit. As mentioned above, the answer has to be
sought in paragraph (b) of the definition of counterfeiting. In view of the common cause facts, the only
remaining issue is whether the marks applied to Rampar's shoes are "the subject matter" or "a colourable
Page 297 of [2011] 2 All SA 290 (SCA)
imitation" of any of Puma's registered trade marks. To be "the subject matter" means, as mentioned, that the
Rampar mark must be identical to a Puma trade mark. An "imitation", in turn, is by definition a copy, and the
adjective "colourable" reinforces the fact that the copy is counterfeit. In other words, the definition says no
more than that a counterfeit must be counterfeit. That is why it must be "calculated to be confused with" or
"taken as being" the registered mark and why it involves deliberate and fraudulent infringement of
trademarks.12
[24] This test is not the same as the standard trade mark infringement test of "likely to deceive or cause
confusion"13 but counterfeiting, by its very nature, amounts a fortiori to trade mark infringement. Reference
during argument to the test to be applied to determine the likelihood of deception and confusion, confusing
similarity, to passingoff principles, imperfect recollection, momentary confusion, the prospective purchaser,