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reported at [2000] 2 All SA 1 (SCA) Ed]). [126] I am of the view that as the Adidas' trade marks have to be viewed as a whole in determining its dominant features and as those dominant features must include the 3stripe mark, the latter qualifies the remaining features of the trade marks sufficiently. This interpretation renders the entry of a disclaimer as sought by respondent unnecessary in this case. It is ordered that: 1. The respondent has not infringed the applicants' trade marks registered under trade mark numbers: 1959/000057; 1995/12283; 1980/06446 and 2001/18582. 2. The respondent has not passedoff its footwear as those of the applicants or as having an association with the footwear of the applicants. 3. The application for an interdict is dismissed with costs. 4. The counterapplication for the entry of a disclaimer against the first applicant's registered trade marks is dismissed with cost. For the parties: None indicated

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Adidas AG and another v Pepkor Retail Ltd [2012] 1 All SA 636 (WCC)

Case Law

Case Outcome

Procedural: Dismissed
Disposition: Injunction or Order Denied

Case Status: Closed

Keywords

Intellectual property
Trademark

Case Number: 14605/2009

Decision date: Dec 15, 2011

Country

South Africa

Judicial Body: Administrative Supreme Court

Court Name: WESTERN CAPE HIGH COURT, CAPE TOWN

Collection: CIPIT

Case Summary: The first applicant was the proprietor of certain well known trademarks. 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 trademarks 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 trademark 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 trademarks 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 sports shoes. The respondent alleged that the marks on those three shoes could not infringe on the two registered trademarks. 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 trademarks "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 trademark owner. Examining the products in question, against the relevant trademarks, 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' trademarks with a 3stripe mark, the use of 2 or 4 stripes on respondent'sfootwear 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 trademark. 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

Date Updated: Nov 7, 2019

Primary Documents

Adidas AG and another v Pepkor Retail Ltd [2012] 1 All SA 636 (WCC).pdf
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