"[5]
The first question that springs to mind is this: what is Global's trade mark as represented on the shoe? I
would have thought that it is DT New York. Puma's counsel argued otherwise because, he said, these
words are meaningless. Trade marks more often than not are objectively meaningless (because if they
have a meaning they may be descriptive) but that does not mean that they cannot be badges of origin
or source identifiers even if they do not disclose the source.
[6]
The second question that springs to mind is whether the stripe on Global's shoe, which is not
substantially the same as the marks in issue, would have been perceived by the purchasing public as a
Page 655 of [2012] 1 All SA 636 (WCC)
source identifier or as an adornment. Since counsel did not address the issue squarely it is not
necessary to consider this question or the effect of the recent judgment of the European Court of Justice
in the Adidas case where the issue was whether the use of two stripes on sportswear could infringe
Adidas's threestripe motif trade mark or whether it would have been perceived as a mere adornment.
[7]
(d)
(e)
If Global's stripe has trade mark significance, as Puma contends, regard must be had to the whole of its
mark, which consists of the stripe with the name, to determine whether it so nearly resembles any of
Puma's marks as to be likely to deceive or cause confusion. Once that is recognised, Puma's reliance on
the first registration is doomed because of the prominence of the name PUMA."
The facts concerning the alleged offending products are as follows:
(i)
The respondent's LDS Sport shoes reflected in "TB8" and "AA16" bear the name "Femme", which
applicants allege is the French term of "woman", on the insole. The shoes also bear the name
"GUNAITE" on the outsole, but this, applicants presume is a reference to the type of outsole
material used.
(ii)
The insole of the respondent's Men's ATH leisure shoe depicted in "TB9" bears the name Xtreme
Sports, which applicants allege is a generic name for a kind of activity.
(iii)
Insofar as the respondent's soccer boot depicted as "TB10", "AA18" and "AA19" is concerned
there is no external indication of origin on the outer. The respondent relies on as the trade mark
"which distinguishes the shoes", their Pepkor T TRAINER trade mark" which appears from the
respondent's photographs to be on the heel of the inner sole of the soccer boot.
(iv)
The insole of the respondent's Boys ATH leisure shoe as depicted on "TB11", "AA20" and "AA21"
has the name Xtreme Sports, which applicants allege is a kind of activity, although the respondent
also relies on "the swing tag which is attached to the shoe".
(v)
The insole and, as appears from the respondent's evidence, the tongue and heel, of the
respondent's Hang Ten shoe depicted in "TB12", "AA22" and "AA23" bear the name "Hang Ten".
(vi)
The respondent's Girls Must Have shoe depicted on "TB13", "AA24" and "AA25" bears the word
"Actif (and device) on the heel of the shoe, and the tongue and, as appears from the
respondent's evidence, also the insole. The applicants allege that the word "Actif is, however,
generic.
Applicants submitted that the present case is more similar to the one dealt with in Puma v Rampar
Trading (59/10) [2010] ZASCA 140 [reported as Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd
Page 656 of [2012] 1 All SA 636 (WCC)
and others at [2011] 2 All SA 290 (SCA) Ed]). Where Harms DP made the following obiter remarks in a
counterfeiting case:
"[27] There can be little doubt that the white Rampar shoe (C) has a copy of the split form strip device on its
inner and outer sides. The strip is in blue and the split is white. This device however has additionally two
white strips that run more or less parallel with the split form thereby framing it. But these stripes make
no impression against the white background of the shoe. Rampar sought to distinguish this reproduction
of the Puma mark by relying on the presence of a prancing dragon and the Dodo device mark on the
heel and the name Dodo Sport on the inside of the shoe. It also said that the mark would have been
perceived as decorative and not as a trade mark. I disagree on both counts. The dragon and the Dodo
marks are at best subsidiary and they do not touch the essence of the split form strip. One also cannot
use a trade mark and then argue that it was used as ornamentation. It could be different if one is
dealing with changes to the mark, for instance, if the registered mark consists of three stripes it would
be a question of fact whether the use of two or four stripes would be perceived as decorative or as trade
mark use but one could not, I would think, use the same argument in relation to the use of three stripes.
On the other hand, I could not understand Puma's reliance on the presence of the dragon, which is said
to be similar to the prancing horse on the Ferrari mark and which Puma is licensed to use, to establish
counterfeiting. It was probably based on a confusion of counterfeiting with passing off."
[43] In casu, we have changes to the mark and not an exact copy of the mark and it is accordingly open to the
respondent to argue that the 2 and 4 stripe configuration is used for decorative purposes.
[44] The applicants have acquiesced in the use by others of two and four parallel lateral stripes on footwear
(a)
The respondent alleges that the applicants have acquiesced in the use by others of branding consisting
of two and four parallel and lateral stripes.
(b)
The defence of acquiescence was described as follows by Friedman AJ (as he then was) in Burnkloof
Caterers (Pty) Ltd v Horseshoe Caterers (Greenpoint) (Pty) Ltd 1974 (2) SA 125 (C) at 137AE [also
reported at [1974] 1 All SA 397 (C) Ed].