[108] The respondent has shown that those features either singularly or taken as a whole appear on shoes
commonly referred to as trainers.
[109] Respondent has, accordingly, succeeded in showing that applicants' footwear has generic features found on
the footwear of respondent and on other footwear in the market.
[110] Applicants have also proved that its 3stripe trade mark is so well known and is always associated with its
brand name, namely Adidas.
[111] Applicants have also shown that respondent's footwear bear respondent's brand name or label of origin,
none of which are confusingly similar to or likely to cause confusion with the brand name or device of Adidas.
[112] Although applicants allege that each label of origin on each of respondent's offending footwear are generic
names or names that are not distinctive, it has not been able to show that despite the presence of these
labels and the absence of the Adidas device, the average consumer is likely to be confused to the point that
an association may be made between respondent's footwear and the Adidas' brand of footwear.
[113] First applicant alleged that it does not consider the five parallel stripes used on footwear by KSwiss to be an
infringement of its three stripes yet applicants incongruously regard the use of 2 or 4 stripes by respondent
as infringement and when used in combination with features of a getup used by applicant, as passingoff.
[114] However, in the light of the agreements that applicants have concluded with Sketchers and KSwiss, I have
insufficient information before me to conclude that applicants have acquiesced in the alleged infringement of
their rights by those companies.
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[115] Although respondent admits that it had previously signed a written undertaking not to infringe or passoff vis
àvis applicants, it alleges that the terms of the undertaking were overbroad and unreasonable. I am,
however, not called upon to make a finding on whether respondent has breached the terms of the previous
undertakings.
Conclusion
[116] I am not persuaded that when viewed against the evidence of the wellknown association of applicants' trade
marks with the 3stripe mark, the use of 2 or 4 stripes on respondent's footwear so nearly resembles 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 trade mark.
[117] Implicit in allowing for the imperfect recollection of a consumer is the assumption that consumers will not
remember every aspect of the registered trade mark. That is not necessarily true of the renowned Adidas 3
stripe feature.
[118] In the PlasconEvans case (supra), the Court accepted that the dominant feature of the mark and the likely
impact it makes on the mind of the consumer is a factor to be considered.
[119] Applicants' entire case is built around the wellknown nature of its 3stripe mark which is further identifiable
by the Adidas label or device also being on their footwear. Accordingly, applicants cannot rely on the imperfect
recollection of consumers with regard to their 3stripe mark, when it cannot be suggested that its registered
mark, has as its dominant feature, anything more or less than 3 parallel, lateral stripes of a different colour to
the shoe.
[120] Applicants also cannot succeed on the passingoff aspect as it has not shown that the getup features it uses
are unique to it nor that when used in combination with 2 or 4 stripes by respondent, the latter is passingoff
its footwear for those of applicants.
[121] Having failed on the infringement and passingoff allegations, applicants have not established harm actually
committed nor reasonably apprehended.
[122] Applicants' attempt to expand their case in reply with reference to other footwear of respondent, does not
assist applicant as the alleged additional offending footwear also contain 2 or 4 stripes and the getup is
widely used in the market.
The counterapplication
[123] The disclaimer which respondent seeks to have entered upon the Register of Trade Marks against the first
applicant's registered trade marks is the following:
"the registration of this trade mark shall give no right to the exclusive use of parallel and equidistant stripes upon
goods other than three such equidistant stripes as depicted".
[124] In terms of section 15 of the Trade Marks Act, 1993, the Court may require that a disclaimer be entered for
the purpose of defining the trade mark owner's exclusive use or rights to the trade mark. The provision
Page 674 of [2012] 1 All SA 636 (WCC)
gives the Court a discretion which must be exercised for good reason (see Albert Baker and Co Ltd v Aerate
Bread Co Ltd (1908) RPC 513 at 525).
[125] Where it is clear that no exclusive rights can be claimed in aspects that go beyond the dominant feature of a
trademark seen together with its remaining features, there is no justification for the entry of a disclaimer (see
Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd 2000 (2) SA 771 (SCA) at paragraph 13 [also