Adidas AG and another v Pepkor Retail Ltd
[2012] 1 All SA 636 (WCC)
Division:
WESTERN CAPE HIGH COURT, CAPE TOWN
Date:
5 December 2011
Case No:
14605/2009
Before:
R ALLIE J
Sourced by:
Adv C Webster SC and G Kay
Summarised by:
DPC Harris
. Editor's Summary . Cases Referred to . Judgment .
Intellectual property Trade marks Alleged infringement Passingoff Whether the marks on the respondent's
footwear were "identical" to or "so nearly resembling" the registered trade marks "as to be likely to deceive or cause
confusion" Trade Marks Act 194 of 1993 Section 34(1)(a) Onus is on the party alleging infringement to show the
likelihood of deception or confusion Applicant had to show that a substantial number of people would probably be
confused about the origin of the goods or about the connection between the offending goods and those of the registered
trade mark owner.
Editor's Summary
The first applicant was the proprietor of certain wellknown trade marks. Products bearing those marks were
marketed and sold in South Africa and globally.
The respondent was a South African retail company.
Seeking interdictory relief, the applicant contended that the respondent in the conduct of its business was
infringing the registered trade marks and was passing off its goods as being those of applicant or as being
connected in the cause of trade with the applicant. In particular, the applicants alleged that the respondent was
infringing the registered trade mark by the use of certain marks on footwear that was offered for sale at some of
the respondent's outlets. The sale of shoes bearing the allegedly infringing marks was admitted by the respondent.
The respondent argued that the registration of two of the four registered trade marks concerned "sporting
footwear of all kinds" and that, except for the respondent's football boot, the other three of the respondent's shoes
that were alleged to bear infringing marks were leisure shoes and not sporting shoes. The respondent alleged that
the marks on those three shoes could not infringe the two registered trade marks.
Held The issue between the parties concerning infringement was limited to the likelihood of deception or
confusion.
In terms of section 34(1)(a) of the Trade Marks Act 194 of 1993, the question was whether the marks on the
respondent's footwear were "identical" to or "so nearly resembling" the registered trade marks "as to be likely to
deceive or cause confusion".
The onus is on the party alleging infringement to show the likelihood of deception or confusion. The applicant had
to show that a substantial number of people would probably be confused about the origin of the goods or about
the connection between the offending goods and those of the registered trade mark owner.
Examining the products in question, against the relevant trade marks, the Court was not persuaded that when
viewed against the evidence of the
Page 637 of [2012] 1 All SA 636 (WCC)
wellknown association of applicants' trade marks with a 3stripe mark, the use of 2 or 4 stripes on respondent's
footwear so nearly resembled the applicants' footwear as to be likely to cause confusion or deception among the
average consumer of average intelligence with an imperfect recollection of applicants' registered trade mark.
Having failed on the infringement and passingoff allegations, the applicants had not established harm actually
committed nor reasonably apprehended. The application for an interdict was dismissed with costs.
Notes
For Intellectual property see:
.
LAWSA Second Edition Replacement Volume Vol 29
.
Burrell TD Burrells South African Patent and Design Law 3ed Durban LexisNexis Butterworths 1999
Cases referred to in judgment
South Africa
Adcock Ingram Products Ltd v Beecham SA (Pty) Ltd [1977] 4 All SA 657
(1977 (4) SA 434) (W) Referred to
661