Puma AG Rudolf Dassler Sport v Global Warming (Pty) Ltd
[2010] 1 All SA 25 (SCA)
Division:
SUPREME COURT OF APPEAL
Date:
11 September 2009
Case No:
408/2008
Before:
LTC HARMS DP, JA HEHER, MML MAYA, BJ VAN HEERDEN JJA and
MJD WALLIS AJA
Sourced by:
A Street
Summarised by:
DPC Harris
Parallel Citation:
2010 (2) SA 600 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
Intellectual property law Trade marks Alleged infringement In comparing trade marks, regard had to be had to the
whole of the marks to determine whether they so nearly resemble each other as to be likely to deceive or cause
confusion.
Editor's Summary
An action based on trade mark infringement was dismissed in the High Court, leading to the present appeal.
The appellant relied on section 34(1)(a) of the Trade Marks Act 194 of 1993, and claimed damages in respect of
two of its trade marks.
Held Section 34(1)(a) of the Trade Marks Act 194 of 1993 provides that the rights acquired by registration of a
trade mark are infringed by the unauthorised use, in the course of trade in relation to goods or services in respect
of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to
deceive or cause confusion.
The Court examined the respondent's product (shoes), and tried to establish what its trade mark, as represented
on the shoe, was. The next question was whether the stripe on respondent's shoe, which was not substantially the
same as the marks in issue, would have been perceived by the purchasing public as a source identifier or as an
adornment. The appellant contended that the stripe had trade mark significance. If that was so, then regard had to
be had to the whole of the mark, which consisted of the stripe with the name, to determine whether it so nearly
resembled any of appellant's marks as to be likely to deceive or cause confusion. As the appellant's trade mark
prominently featured its name, the reliance on the first trade mark had to fail.
On the second issue, the appellant argued that the question of the likelihood of confusion or deception is a
matter of first impression and that one should not peer too closely at the registered mark and the alleged
infringement to find similarities and differences. The Court, however, agreed with the trial court that regard must be
given to the overall impression given by the marks; and that registered trade marks do not create monopolies in
relation to concepts or ideas. It was held that the average consumer would have had regard to the fact that the
words "DT NEW YORK" was part of the trade mark and would have noted that the two stripes were significantly
different and, consequently, the respondent's mark was not confusingly or deceptively similar.
The appeal was dismissed.
Notes
For Intellectual property see:
.
LAWSA First reissue Vol 29
Page 26 of [2010] 1 All SA 25 (SCA)
.
Burrell TD Burrells South African Patent and Design Law 3ed Durban LexisNexis Butterworths 1999
Cases referred to in judgment
South Africa
Bergkelder Bpk v Vredendal Koöp Wynmakery [2006] 4 All SA 215 ([2006]
ZASCA 5; 2006 (4) SA 275 (SCA) Referred to
28
Cowbell AG v ICS Holdings Ltd [2001] 4 All SA 242 ([2001] ZASCA 18;
2001 (3) SA 941) (SCA) Applied
28
Laboratoire Lachartre SA v ArmourDial Inc [1976] 3 All SA 88
(1976 (2) SA 744) (T) Applied
28
Lubbe NO v Millenium Style (Pty) Ltd [2007] 4 All SA 692 ([2007] ZASCA
10; [2007] SCA 10; 2007 (6) SA 241) (SCA) Referred to
28