confusion or being passed off as Adidas' shoes.
[81] The features of the getups of the applicants' shoes relied on by the applicants are generic features
(a)
The respondent alleges that the getups of the applicant's shoes are generic and occur frequently in the
market.
(b)
The applicants' claim on passing off is based on several different Adidas shoe products. The applicants'
case is that the, different, getups of each of these shoes are distinctive of Adidas. It is the combination
of features of each of these shoes that makes up the distinctive getup of each shoe.
(c)
It was submitted on applicant's behalf that the design and getup of any of the applicants' shoes
includes the 3stripe trade mark as used on that shoe. On applicant's behalf it was submitted that it
makes no sense to postulate an Adidas shoe without the 3stripe trade mark and that the getup of
any of the applicants' shoes is a combination of the features of that shoe, including the 3stripe trade
mark.
(d)
On the respondent's behalf it is submitted that the applicants' contention in this regard "is the
equivalent of contending that placing a trade mark on a matchbox renders the matchbox distinctive".
[82] Certain of the features of the getups relied on by the applicants are entirely functional
The respondent alleges that certain of the features of the getups relied on by the applicants are
entirely functional.
(a)
(i)
The respondent alleges that the applicants are placing reliance on functional features of their
Tuscany shoe.
(ii)
The respondent alleges that the applicants are placing reliance on functional features of their
2006 Predator boot.
Page 668 of [2012] 1 All SA 636 (WCC)
(iii)
The respondent alleges that the applicants are placing reliance on functional features of their
Superstar shoe.
Mr Behean explains that, "functional design features" of the Tuscany and AdiRacer shoes were only
"functional" to the extent that these shoes were used for racing driving. They are, therefore, no longer
functional and are relevant for the purposes of distinguishing these shoes from trainers manufactured
by other manufacturers. Likewise, in the case of the Superstar shoe, applicants argue that any features
that were "functional" to the extent that the shoe was originally a basketball shoe are not functional in
the shoe as a trainer.
(b)
[83] The respondent's own trade marks distinguish its shoes from those of others
(a)
The respondent alleges that its own trade marks that are clearly featured on its shoes distinguish them
from other brands.
(b)
On applicant's behalf, it is submitted that what the respondent relies on as its trade marks are not
sufficient to remove any confusion with the applicants' products.
[84] The price of the respective shoes of the parties and the markets in which these shoes feature differ
(a)
The respondent alleges that the price of and the markets in which the respective shoes of the parties
feature differ significantly.
(b)
The applicants point out that, contrary to what the respondent alleges, Adidas footwear is not just
distributed in highend stores but is also distributed in stores catering to the middle and lower market
and certain of the respondent's stores are situated in highend malls. In any event, it is submitted on
behalf of applicants, that the 3stripe trade mark, as an "aspirational" brand, will entice customers in
the lowerend of the market to purchase goods which they believe bears that mark wherever they may
find them.
XII The harm caused to the applicants as a result of the conduct of the respondent
[85] The harm that the applicants allege they have suffered as a result of the alleged infringement of the first
applicant's registered trade marks and the alleged passing off by the respondent of its goods as being those
of the applicants or as being in some way connected with the applicants is set out in the founding affidavit, as
follows:
"(a)
The respondent's use of the infringing marks and the respondent's getups in the footwear to which I have
referred above will cause the applicants actual financial loss, blur the distinctiveness of those trade marks and
getups and will tarnish the reputation of the applicants. The respondent has clearly and deliberately set out to
sell footwear bearing marks and getups identical or very similar to the registered trade marks and the
applicants' getups with a view to capitalising on the goodwill attaching to this footwear.
(b)
The applicants have no control whatsoever over the nature or quality of the footwear sold by the respondent
under the infringing marks and the use of the first and second applicants' get ups in respect of the footwear to
which I have referred above.
Page 669 of [2012] 1 All SA 636 (WCC)
(c)
As a consequence of the actions of the respondent in selling the infringing footwear and in passing that
footwear off as being that of the applicants or as being connected with the applicants, the applicants have