that a substantial (ie, not negligible) number of people have to be confused, evidence about the public's
perception and how Rampar intended to market the goods was, accordingly, singularly out of place and
unhelpful.
[25] My main problem with the manner in which Puma's case was presented was that it took a bundle of related
(some associated) trade marks, referred to them as its form strip mark (in the singular), and then argued that
the marks on the Rampar shoes were counterfeit. The heads of argument relied on five marks in relation to
three shoes. During argument, the number came down to two and when it transpired that one of them had
not been registered at the time of seizure, Puma was left with one, called its "split" form strip which is
registered under no 2004/14412.
[26] This trade mark consists of the basic form strip device of a tapering curved stripe running from the upper left
to the lower right, but splits into two with an inverted V, widening towards the lower more substantial part. If
applied to the side of a shoe it would run (but not necessarily so) from the upper portion of the heel to meet
the sole at the middle of the shoe.
[27] There can be little doubt that the white Rampar shoe (C) has a copy of the split form strip device on its inner
and outer sides. The strip is in blue and the split is white. This device, however, has additionally two white
strips that run more or less parallel with the strip form thereby framing it. But these stripes make no
impression against the white background of the shoe. Rampar sought to distinguish this reproduction of the
Puma mark by relying on the presence of a prancing dragon and the Dodo device mark on the heel and the
name Dodo Sport on the inside of the shoe. It also said that the mark would have been perceived as
decorative and not as a trade mark. I disagree on both counts. The dragon and the Dodo marks are at best
subsidiary and they do not touch the essence of the split form strip. One also cannot use a trade mark and
then argue that it was used as ornamentation. It could be different if one is dealing with changes to the mark,
for instance, if the registered mark consists of three stripes it would be a question of fact whether the use of
two or four stripes would
Page 298 of [2011] 2 All SA 290 (SCA)
be perceived as decorative or as trade mark use but one could not, I would think, use the same argument in
relation to the use of three stripes. On the other hand, I could not understand Puma's reliance on the
presence of the dragon, which was said to be similar to the prancing horse on the Ferrari mark and which
Puma is licensed to use, to establish counterfeiting. It was probably based on a confusion of counterfeiting
with passing off.
[28] Shoe B is virtually identical to the one just mentioned but differs, importantly, in colour. It is a black shoe. It
also contains the split form device, which is now in black. The V of the split is in white and the outer parallel
stripes are in white. In other words, the Rampar shoe contains a counterfeit split form framed in contrasting
white. In my judgment, the addition of the frame does not change the result. Rampar took the registered
mark and in spite of the presence of the frame the mark on the shoe is still "calculated to be confused with" or
"taken as being" that of Puma.
[29] The third shoe (A) also incorporates the split form but in addition has an inverted form strip made of a
different material at the heel but which appears to be part of the construction of the shoe. It, too, in my
assessment, is counterfeit because even with the inverted strip the shoe is still "calculated to be confused
with" or "taken as being" that of Puma especially since the inverted device is identical to Puma's "traditional"
strip form.
Conclusion
[30] It follows that the court below had erred and that the appeal must be upheld. The following order is made:
"The appeal is upheld with costs and the order of the court below substituted with an order dismissing the application
with costs."
(Heher, Snyders, Tshiqi JJA and Pillay AJA concurred in the judgment of Harms DJP.)
For the applicant:
I Joubert instructed by Spoor and Fisher, Pretoria
For the respondent:
G Marriott instructed by DM Kisch Incorporated, Sandton
Footnotes
1
2
3
4
5
6
For an earlier discussion see AM Moolla Group Ltd and others v The Gap Incorporated and others 2005 (2) SA 412
(SCA) [also reported at [2005] 3 All SA 101 (SCA) Ed].
S 7(4)(a):
"Any person prejudiced by a seizure of goods in terms of section 4(1), may at any time apply to the court on notice of
motion for a determination that the seized goods are not counterfeit goods and for an order that they be returned to
him or her."
Agreement on TradeRelated Aspects of Intellectual Property Rights.
Compare Gallo Africa v Sting Music (40/10) [2010] ZASCA 96 para 18 [reported at [2011] 1 All SA 449 (SCA) Ed].
Paris Convention for the Protection of Industrial Property.
S 1:
"Counterfeiting (a) means, without the authority of the owner of any intellectual property right subsisting in the Republic
in respect of protected goods, the manufacturing, producing or making, whether in the Republic or elsewhere, of any