trade marks is that the respondent's mark has one less stripe. The respondent has used the registered
trade marks and just removed one stripe. They claim that the respondent has again used the serrated
edge to the stripes often used by the applicants.
(c)
The respondent alleges that the stripes on this shoe are a "two" combination of lateral downward
stripes which are not equally spaced or equidistant. The allegation is made that such stripes cannot be
confused with three equally spaced horizontal stripes of varying lengths which run parallel and
substantially at a right angle to the vertical, which is what the respondent alleges constitutes
registered trade mark 1995/12283. The respondent also distinguishes the stripes on this shoe from
registered trade mark 2000/18582 on the basis that this shoe does not feature three equally spaced
equidistant parallel stripes.
[37] The Girls Must Have shoe depicted on Annexure "TB13"
(a)
This shoe:
(i)
has two lateral stripes;
(ii)
the colour of the stripes contrasts with the colour of the background of the shoe;
(iii)
the stripes are parallel to each other;
(iv)
the stripes run substantially downwards and backwards from the fastening of the shoe to the
sole;
(v)
the stripes are the same width.
(b)
The applicants allege the only differences between the stripe mark used on this shoe and the
registered trade marks is that the respondent's mark has one less stripe and the space between the
stripes are wider than the width of a stripe. They claim that the respondent has used the registered
trade marks but has removed one stripe and made the space between the stripes wider than the width
of a stripe. The respondent has again used the serrated edge to the stripes often used by the
applicants.
(c)
The respondent points to the same features of the stripes on this shoe as is it did when distinguishing
the stripes on the respondent's Hang Ten shoe from registered trade marks 1995/12283 and
2000/18582.
[38] The applicants allege that the respondent is using the first applicant's registered trade marks and is simply
adding or removing a stripe. The respondent denies that the allegedly "decorative" two stripes of an allegedly
"nondistinctive nature" featured on its "Hang Ten" and "Girls Must Have" shoes merely constitute the
removal of a stripe from the 3stripe mark and so becomes confusingly similar to the registered trade mark.
The applicants allege that respondent's use of the marks as described above is likely to cause deception or
confusion. The respondents allege
Page 652 of [2012] 1 All SA 636 (WCC)
that the addition or removal of one stripe is not sufficient to create this likelihood. Applicants allege that from
the results of the survey designed by Dr Corder it seems that consumers form a general impression of a mark
and do not recall each and every detail. The results are that when seeing a photograph of a shoe bearing
Adidas's 3stripe mark, many respondents in the survey identified the shoe as an Adidas shoe and quite a few
of those respondents gave "stripes" (rather than three stripes) as the reason for their answer.
[39] The dominant features alleged by the applicants do not all form part of their registered trade marks. The
registered trade marks of the applicant are specifically for three stripes. The registration of the trade marks do
not refer expressly or impliedly any number of stripes which run obliquely towards the heel and which run
from the shoe fastening towards the sole.
III The respondent's general defences to the applicants' case on trade mark infringement
[40] In addition to the defence of the respondent based on the allegation that two of the registered trade marks
are registered only in respect of "sporting footwear of all kinds" and that three of the four relevant shoes of
the respondent are allegedly not "sporting footwear", and in addition to the respondent's denials of similarity
between the markings on its footwear and the registered trade marks, the respondent raises other, more
general, defences to the applicants' case on trade mark infringement.
[41] The Adidas monopoly in the registered trade marks must be confined to three stripes
(a)
The respondent maintains that "the only distinguishing feature of registered marks as they appear on
the Register is the three lateral parallel and equidistant stripes of equal width and different colour or
material to the footwear to which the striping is applied." This allegation is denied by the applicant. The
respondent alleges that it "has never disputed the validity of the applicants' trade mark registrations
but has come to the view that the monopoly afforded by those registrations is not being exercised by
the applicants within its proper limits."
(b)
On behalf of applicants, it was submitted that the respondent's arguments in this regard lose sight of
the principle that the protection afforded by the registration of a trade mark relates not only to the use
by others of an identical mark but also to the use of a mark so similar to the registered trade mark as to
be likely to deceive or cause confusion. Over the years various Courts both in South Africa and
elsewhere have, in certain circumstances, found that signs consisting of two or four stripes have
infringed Adidas's 3stripe registered trade marks. See for example: Adidas Sportschuhfabriken Adi
Dassler KG v Harry Walt and Co (Pty) Ltd 1976 (1) SA 530 (T) [also reported at [1976] 2 All SA 45 (T)