on trade mark infringement of six trade marks1 that belong to a Trust represented by its trustees. In
response to a counterapplication for the rectification of the trade mark register he ordered that the marks be
expunged. He consequently dismissed the infringement application having found in addition that there could
in any event not have been any infringement. He granted leave in relation to the expungement only but this
Court extended the scope of the appeal by granting leave in relation to the infringement.
[2] There are cybersquatters and there are those who squat on the trade mark register. Judged by the papers
in this case the Trust is an entity that used the register to stifle competition and not for its statutory purpose.
The fact that there is no opposition to an application for registration or
View Parallel Citation
that there is not already something similar on the register does not mean that the application should proceed
to grant.
[3] This practice gives intellectual property law a bad name. It also throws serious doubt on whether this part of
the law covers anything intellectual. Significantly, a few days before the hearing of the appeal the Trust
admitted that two of its marks did not have the ability to distinguish but nevertheless sought to prevent their
expungement on technical grounds. The reader may be surprised to know that the Registrar had registered
the one (TM 1987/9450) in Part A of the register in terms of the Trade Marks Act 62 of 1963, which meant that
the Registrar was at the time satisfied that the mark was distinctive. Maybe I should surprise the reader
further by describing this particular trade mark: it is a device for a shoe sole and the device consists of a
single transverse stripe towards the end of the heel. The other mark (TM 1998/14074) covered by the Trust's
concession is simply the side view of a shoe sole.
[4] But this case is not really about trade marks. It is about the suppression of competition. The appellants are
upset because a former employee went into competition with them by making shoes that by virtue of their
design and construction and overall appearance are "an almost direct copy" of a shoe made by or under
licence from the Trust. As said by the main deponent on behalf of the appellants, Mr AP Lubbe, their case is
essentially a simple one: the trade marks are infringed because the respondents use the distinctive
characteristics of the appellants' sole construction. Their unfair competition case, it need be stated, fell apart
in the High Court and no attempt was made to rebuild it.
Page 694 of [2007] 4 All SA 692 (SCA)
[5] The appellants' case invited an attack on the five trade marks registered in Part A of the register under the
1963 Act on the ground that in each instance the shape and configuration of a shoe sole was registered,
something not permitted by the 1963 Act. The appellants responded vehemently by stating that they were
entitled to register the shape and configuration of a sole as a trade mark because it is a "device".
[6] In cannot be gainsaid that shapes were not registrable under the 1963 Act as trade marks and calling shapes
"devices" made no difference to the conclusion. See WeberStephen Products Co v Registrar of Trade Marks
1994 (3) SA 611 (T) at 615GI; cf Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000]
FCA 876 paragraph 16. But, submitted counsel for the appellants, we must ignore what the appellants had
said about the meaning of their trade marks because what was indeed registered were devices, ie, visual
representations or illustrations capable of being reproduced on a surface, whether by printing, embossing, or
by any other means (s 2(1) "device"). To explain the difference: the appellants' case on the papers was that
the transverse stripe referred to represents an indication that the end of the heel is bevelled. Now the
argument is that the stripe is simply a stripe printed or embossed on a sole. The argument becomes odd if
regard is had to TM 1988/05584. It clearly shows an ordinary heel of a shoe plus
View Parallel Citation
three stripes of no particular distinctiveness. Counsel had to submit that what was obviously intended to be a
heel was in reality the impression of a heel but that the use of a real heel would also infringe.
[7] This aspect of the case can be disposed of on two bases. The first is this. The admission, disclaimer,
memorandum, limitation or condition of each of these registrations begins with this statement:
"Die merk bestaan uit die devise van die patroon van 'n SOOL, wat toegepas word op 'n SKOEISEL."
Translated, it means that the mark consists of a device of the design of a sole applied to footware. There is a
big difference between a device which has to be applied onto a sole (which could have been registered) and a
design of a sole (which could not). The wording confirms what the marks were obviously intended to
represent, namely the design of a sole, and how the appellants impermissibly sought to enforce them.
[8] Once the conclusion is that these marks were not registrable under the 1963 Act, they have to be expunged.
Under section 70 of the Trade Marks Act 194 of 1993, the validity of the original entry of a trade mark on the
register existing at the commencement of this Act must be determined in accordance with the law then in
force. Section 42 of the 1963 Act provided that (subject to certain exclusions) trade marks registered in Part A
are to be taken as valid in all respects after seven years. One exclusion was if the trade mark offended
against section 16 which, in turn, prohibited a registration "contrary to law". The registration of the shape of
an article was at the time contrary to law because only "marks" as defined (which excluded shapes) could be
registered.
[9] The second basis relates to the trade mark value of distinctive shoe soles and devices for soles. Under the
1993 Act devices, shapes and configurations may be registered as trade marks. But the mere fact that they
may be distinctive does not mean that they are distinctive in the trade mark sense, ie to indicate source of