Martin Johnson (Pty) Ltd v Cardello Footwear Manufacturers CC
[1999] 3 All SA 81 (N)
Division:
Natal Provincial Division
Date:
6 January 1999
Case No:
4212/98
Before:
Page J
Sourced by:
A Van Zÿl
Summarised by:
L Bejai
. Editor's Summary . Cases Referred to . Judgment .
Intellectual property rights Unlawful competition Application for interdict Failure to show inventiveness Copying of a
rival's product, which does not enjoy any statutory protection, does not per se amount to unlawful competition Whether
such copying would amount to unlawful competition depends on a number of factors including the initial investment of
time, labour and money in the product, its originality and its commercial success, the ease with which it was copied, the
technical and commercial feasibility of product differentiation, and the economic sense or nonsense of requiring
investment in redesigning a satisfactory product from scratch.
Editor's Summary
Both the Applicant and Respondent were footwear manufacturers which designed and produced footwear for sale
to retail outlets. The Applicant brought an application against the Respondent for an order restraining the latter
from utilising certain lasts and patterns, in which the Applicant claimed proprietary rights, in the manufacture of its
footwear, together with certain ancillary relief in the form of delivery up of certain allegedly offending items.
Held The main issue before the Court was whether the Applicant was entitled to any interim relief pending the
final determination of the application. The
Page 82 of [1999] 3 All SA 81 (N)
Court was required to consider firstly, whether the Applicant had established the requisite clear right or a right
which, if not clear, has been prima facie established though open to some doubt. Secondly, even if such a right has
been established, the Court had to be satisfied that the balance of convenience favoured the granting of an interim
order.
The Applicant argued that it had established a right to prevent the Respondent from using the lasts on the basis
that such use would constitute an unlawful exploitation by the Respondent of the fruits of the Applicant's labour
and ingenuity and as such would amount to unlawful competition. According to the judgment of Schultz v Butt
1986 (3) SA 667 (A) the copying of a rival's product, which does not enjoy any statutory protection, does not per se
amount to unlawful competition. Whether such copying would amount to unlawful competition depends on a
number of factors including the initial investment of time, labour and money in the product, its originality and its
commercial success, the ease with which it was copied, the technical and commercial feasibility of product
differentiation, and the economic sense or nonsense of requiring investment in redesigning a satisfactory product
from scratch.
Applying these principles in casu the Court found that the Applicant had failed to establish that which was
allegedly copied was the product of any significant inventiveness or labour on its part. On the contrary, it appeared
to be a basic utilitarian design in general use and without any unique features whatsoever. The Court considered
the prevalence in the footwear industry of copying the products of another and concluded that the Respondent's
conduct was not so reprehensible that it should be labeled as unlawful competition. The Applicant was accordingly
not entitled to any interim relief in respect of the lasts. However the Court ordered that the Respondent be
interdicted and restrained from utilising certain of the Applicant's patterns.
The application was accordingly adjourned sine die.
Notes
For Unlawful Competition, see LAWSA Reissue (Vol 376408)
Cases referred to in judgment
("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed.)
Schultz v Butt 1986 (3) SA 667 (A) F
Judgment
PAGE J: The applicant is a footwear manufacturer which designs and produces footwear for sale to retail outlets.
The respondent conducts a similar business, admittedly in competition with the applicant.
The applicant has brought an application against the respondent for an order restraining the respondent from
utilising certain lasts and patterns, in which the applicant claims proprietary rights, in the manufacture of its
footwear, together with certain ancillary relief in the form of delivery up of certain allegedly offending items.