the light of the disclaimer, to be discounted for purposes of determining infringement was not argued and
need not be decided.
[5] The first question that springs to mind is this: what is Global's trade mark as represented on the shoe? I
would have thought that it is DT NEW YORK. Puma's counsel argued otherwise because, he said, these words
are meaningless. Trade marks more often than not are objectively meaningless (because if they have a
meaning they may be descriptive) but that does not mean that they cannot be badges of origin or source
identifiers even if they do not disclose the source.
[6] The second question that springs to mind is whether the stripe on Global's shoe, which is not substantially
the same as the marks in issue,
Page 28 of [2010] 1 All SA 25 (SCA)
would have been perceived by the purchasing public as a source identifier or as an adornment.1 Since
counsel did not address the issue squarely it is not necessary to consider this question or the effect of the
recent judgment of the European Court of Justice in the Adidas case where the issue was whether the use of
two stripes on sportswear could infringe Adidas's threestripe motif trade mark or whether it would have been
perceived as a mere adornment.2
[7] If Global's stripe has trade mark significance, as Puma contends, regard must be had to the whole of its mark,
which consists of the stripe
View Parallel Citation
with the name, to determine whether it so nearly resembles any of Puma's marks as to be likely to deceive or
cause confusion. Once that is recognised, Puma's reliance of the first registration is doomed because of the
prominence on the name PUMA.
[8] That brings me to a consideration of the second registration. The trial court relied on Cowbell3 f o r t h e
proposition that the decision about the likelihood of confusion or deception involves a value judgment; that a
global appreciation is required; 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. The court also had
regard to the factors set out in PlasconEvans at that have to be taken into account in determining the
question whether there is a probability or likelihood of confusion.4 It held that the average consumer would
have had regard to the fact that DT NEW YORK was part of the trade mark and would have noted that the
two stripes are significantly different and, consequently, that Global's mark was not confusingly or deceptively
similar.
[9] As counsel for Puma reminded us, 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.5 As a matter of first impression I came to the same conclusion as did the trial
court. Argument did not convince me to the��contrary, and in my view the trial court was correct in its eventual
judgment.
[10] The court did, however, have regard to matters that were not permissible to consider. These included the fact
that the mark on Global's packaging
Page 29 of [2010] 1 All SA 25 (SCA)
differed from that used on the shoe; that Puma after instituting action in this case applied for registration of a
trade mark that approximated Global's stripe; and that Puma did not produce in evidence, as it undertook to
do, a shoe with either of these trade marks. These factors might have been relevant in a passingoff situation
but they are not in a trade mark infringement case which requires an objective comparison between the
registration and the defendant's actual use.
[11] The fact that the test is objective impinges on another aspect of Puma's case. It sought to rely on the
subjective intention of Global in adopting the stripe to support a finding of infringement. The first problem with
the argument concerns the evidence. Global sought to produce a shoe that approximated the Puma Sprint
shoe without infringing its trade marks. The photograph of the Sprint shoe, as reproduced in the record, does
not appear to bear either of the two registered marks in issue although it could be considered to be an
View Parallel Citation
adaptation of the first mark. In any event, there are other aspects to the argument. The first is that the
intention to compete must not be confused with the intention to mislead.6 The second is that the subjective
intention of a defendant could hardly assist in deciding the objective question of the likelihood of deception or
confusion. The New Zealand Court of Appeal in Advantage Group Ltd v ADV ECommerce Ltd [2002] NZCA 282
quoted in this regard McCarthy on Trademarks and Unfair Competition (4ed), paragraph 13.22 with approval:
"Almost all of the modern decisions have shifted the emphasis away from the defendant's subjective mental state,
and have placed prime importance upon the issue of likelihood of confusion and consequent consumer deception. That
is, the objective facts of probable customer confusion are more important than trying to determine what was going on
in the defendant's mind."
One could test the proposition by asking whether the intention of a defendant not to confuse or deceive could
assist in a defence of noninfringement. The answer must be in the negative because as an Arizona court