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Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd and others [2011] 2 All SA 290 ([2010] ZASCA 140) Referred to 655 Reckitt and Colman SA (Pty) Ltd v SC Johnson and Son SA (Pty) Ltd [1993] 1 All SA 27 (1993 (2) SA 307) (A) Referred to 646 Sparletta (Pty) Ltd v Namibia Breweries Ltd 1991 NR 384 (HC) Referred to 671 Stellenbosch Farmers' Winery Ltd v Stellenvale Winery (Pty) Ltd [1957] 1 All SA 123 (1957 (4) SA 234) (C) Referred to 661 Verimark (Pty) Ltd v BMW Agbmw AG v Verimark [2007] JOL 19890 (2007 (6) SA 263) (SCA) Referred to 647 Europe AdidasSalmon AG v CCC Boty Czech sro, unreported (High Court in Olomouc) Referred to 653 AdidasSalomon AG v Dolce and Gabbana Germany GmbH, unreported (Munich Higher Regional Court) Referred to 653 AdidasSalomon AG v eramSchuhe GmbH, unreported (Cologne District Court) Referred to 653 AdidasSalomon AG v Skechers USA Deutschland GmbH, unreported (Hamburg District Court) Referred to 653 La Rinascenta Spa, unreported (Court of Lodi) Referred to 653 Matteo Jin and others v Adidas Salomon, AG and others, unreported, (Madrid Provincial High Court) Referred to 653 Nike International Ltd and another v AdidasSalomon AG, unreported (Cologne Higher Regional Court) Referred to 653 Societe Adidas Sarragan France and another v SARL Sylvie Fashion Prise, unreported (Bobigny First Instance Court) Referred to 653 United Kingdom Adidas Aktiengesellschaft and another v Woolworths (Pty) Ltd 1999 BIP 433 (C) Referred to 652 Page 639 of [2012] 1 All SA 636 (WCC) Albert Baker and Co Ltd v Aerate Bread Co Ltd (1908) RPC 513 Referred to 674 Inlima SL's application for a 3 Dimensional Trade mark [2000] RPC 661 (Trade Marks Registry) Referred to 653 Klisser's Farmhouse Ltd v Harvest Bakeries Ltd 1989 RPC 27 Referred to 661 Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 Referred to 646 The Commissioners of Inland Revenue v Muller and Co's Margarine Ltd (1901) AC 217 244 (HL) Referred to 660 United States of America Adidas America Inc and another v Payless Shoesource Inc, unreported (US District Court for the District of Oregon) Referred to 653 Judgment ALLIE J: [1] First applicant is the proprietor of registered South African Trade Mark numbers 1959/000057, 1995/12283, 1980/06446 and 2001/18582 all of which are versions of Adidas' very wellknown 3stripe trade mark. [2] First applicant's products bearing these marks are marketed and sold in South Africa and globally. [3] First applicant is Adidas AG, established in accordance with the provision of the laws of Germany. It is the parent company of the Adidas group of companies. First applicant is responsible, inter alia, f o r t h e management and licensing of Adidas and other intellectual property rights globally which includes the enforcement of Adidas trade mark and other intellectual property rights.

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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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