[77] The respondent's Hang Ten shoe Annexure "TB12" and the respondent's Girls Must Have shoe, Annexure "TB13"
compared to the Adidas Superstar shoe and Annexure "TB62"
(a)
The Superstar shoe was first introduced into the world market in 1970. This shoe was initially designed
as a basketball shoe but it has, over the years, evolved into a fashion wear/lifestyle shoe. The design
features of this shoe included, but are not limited to, its rubber "shell" toe and the tread pattern on the
sole.
(b)
(i)
The respondent's Hang Ten shoe is white in colour. There are two lateral stripes. The colour of the
stripes differs from the colour of the shoe on which they are affixed. The stripes are parallel to
each other. They run substantially downwards and rearwards from the fastening of the shoe to
the sole. They appear on both sides of the shoe. They are of the same width. They run obliquely
in a direction towards the heel of the shoe if looked at from the top. The parallel stripes on the
side of the shoe are serrated. The shoe has a heel patch of a different colour to the shoe.
Embossed on the heel patch is a device which
Page 666 of [2012] 1 All SA 636 (WCC)
represents two feet. The device is white, a different colour from the heel patch, which is grey in
colour. The shoe is otherwise a combination of white and grey. The feet device is also contained
on the tongue of the shoe in a colour different from that of the rest of the shoe. The shoe has a
rubber toe cap with specific markings applied to it. The stitching lines around the side wall of the
shoe and the tread pattern on the outsole should also be noted. The name "Hang Ten" appears
on the insole of the grey and white shoe.
(c)
(ii)
The respondent's Girls Must Have shoe is white and pink in colour. There are two lateral stripes.
The colour of the stripes differs from the colour of the shoe on which they are affixed. The stripes
are parallel to each other. They run substantially downwards and backwards from the fastening of
the shoe to the sole. They appear on both sides of the shoe. They are of the same width. They
run obliquely in a direction towards the heel of the shoe if looked at from the top. The parallel
stripes on the side of the shoe are serrated. The shoe has a heel patch of a different colour to the
shoe. Embossed on the heel patch is the word "Actif." The word "Actif" is in turn a different colour
from the heel patch, which is pink in colour. The shoe is otherwise a combination of white and
pink. The word "Actif" is also on the tongue of the shoe in a colour different to that of the rest of
the shoe. This shoe also has a rubber toe cap with specific markings on it.
(i)
The Hang Ten shoe prominently displays a stripe mark that is twostripes. In addition, the
following features are similar to the Superstar shoe:
(ii)
.
rubber shell toe and sole;
.
ribs on the shell toe;
.
tread pattern on the rubber sole;
.
markings on the heel; and
.
stitching lines on the upper.
The applicants allege the overall design of the respondent's Girls Must Have shoe is virtually
identical to the Superstar shoe. The Girls Must Have shoe prominently displays a stripe mark that
is twostripes. In addition, the applicants allege that the following features are identical to the
Superstar shoe:
.
rubber shell toe and sole;
.
ribs on the shell toe;
.
tread pattern on the rubber sole;
.
markings on the heel; and
.
stitching lines on the upper.
Page 667 of [2012] 1 All SA 636 (WCC)
[78] The rubber toe and shell ribs, tread pattern on the sole, markings on the heel and stitching lines on the upper
do not form part of the exclusive features of applicant's product. The presence of the Hang Ten device serves
to detract from the alleged similarity in the getup.
XI The respondent's general "defences" to the applicant's case on passingoff
[79] The use of two or four stripes is not a passingoff of three stripes
(a)
The respondent repeats the submission made by it in respect of trade mark infringement namely, that
the use of two or four stripes on its shoes is not an infringement of the Adidas 3stripe trade mark.
(b)
Applicants allege that there is no merit in it.
[80] The wellknown nature of the Adidas 3stripe trade mark excludes the possibility of other stripes on the
respondent's shoes being likely to cause such shoes to be mistaken for Adidas shoes
(a)
The respondent alleges that what it refers to as, "the proven pervasive notoriety of the Adidas 3stripe"
trade mark, excludes the possibility of decorative stripes of less or more than 3 stripes causing