[4] The second applicant is Adidas International Marketing BV, a juristic first established in accordance with the
laws of the Netherlands. The second applicant is a wholly owned subsidiary of the first applicant.
[5] The respondent is Pepkor Retail Limited, a South African company. The respondent trades as, inter alia, Pep
Stores and Ackermans.
[6] The applicant's case is that the respondent in the conduct of its business is infringing the registered trade
marks and is passing off his goods as being those of applicant or as being connected in the cause of trade
with the applicant.
[7] The applicant seeks the following relief:
7.1.
Interdicting and restraining the respondent from infringing the first applicant's rights acquired by the
registration of certain of its trade marks by using, in the course of trade and in relation to goods for
which trade marks are registered, a mark consisting of 2 or 4 parallel stripes of a colour or material
different from the colour or material of the footwear upon which they are placed in a particular
configuration or on any other mark nearly resembling the registered trade mark as to be likely to
deceive or cause confusion, as contemplated in section 34(1)(a) of the Trade Marks Act 194 of 1993;
7.2.
Interdicting and restraining the respondent from passing off its footwear as being that of the first
applicant or as been connected in the course of trade with the first applicant, by using a getup so
Page 640 of [2012] 1 All SA 636 (WCC)
closely resembling the getup of the first applicant's footwear as to be likely to cause deception or
confusion.
[8] In the amended Notice of Motion, the applicant added relief sought in terms of section 34(1)(b) of the Act and
included a reference to a further registered trade mark which was not included in the founding affidavit.
[9] The respondent by way of a counterapplication seeks an order that a disclaimer or memorandum be entered
on the Register of Trade Mark against the first applicant's registered trade marks to the effect that "the
registration of this trade mark shall give no right to the exclusive use of parallel and equidistance stripes upon the
goods other than 3 such equidistant stripes as depicted."
[10] Furthermore, the respondent has opposed the application on the basis that:
10.1. The protection afforded by first respondent's registered trade mark is limited to 3 parallel stripes and
not any other number of parallel stripes as registered and configured in terms of its trade mark
registration;
10.2. The first applicant has impermissibly sought to expand the scope of the protection afforded by its
registered trade mark by the employment of what the respondent termed the Adidas technique;
10.3. Apart from the particular 3stripe configuration of its registered trade mark, the further dominant and
striking feature relied upon by the applicant for the impermissible extension of its monopoly are in fact
nondistinctive, ubiquitous, in the public domain and common to standard trainers featuring fashionable
but common place decorative striping;
10.4. The Adidas 3stripe trade mark is so notorious, recognisable and distinctive that there is no possibility
that a consumer of the goods concerned would, when confronted with a trainer featuring 2 or 4 parallel
stripes in a decorative fashion, be confused in to believing that they are the goods of, or are associated
with, the applicants;
10.5. The stripes on the respondent's shoes are not used as trade marks, but as embellishments or
decoration. The respondents own or licenced trade mark as depicted on the goods serve to identify the
source of the goods;
10.6. The applicants' reliance on the previous South African judgments is misplaced, and cannot assist the
factual inquiry and comparative analysis which this Court is enjoined to make in the present matter;
10.7. The applicant has acquiesced in or has represented to the respondent and the marketplace at large
that they have acquiesced and had used a parallel stripe of any number other than 3 on trainers and
leisure footwear.
[11] The applicant's case based on passing off, is opposed by the respondent on the basis that the alleged Adidas
technique is in fact features which are generic in the marketplace and they do not form part of the features of
its trade mark.
Page 641 of [2012] 1 All SA 636 (WCC)
[12] The parties are ad idem that the primary question for determination is the scope of the protection afforded by
the Adidas 3stripe trade mark taking into account the entitlement of other traders to use certain marks.
The alleged infringement of first applicants' trade mark
[13] The first applicant's registered trade mark relied on are the following:
13.1 Registered trade marks number 1959/000057 which is registered in class 25 in respect of sports and
footwear of all kinds. The relevant class 25 in respect of this mark is that reflected in Schedule 4 to the
Trade Mark Regulations, 1971. This class is for "clothing, including boots, shoes and slippers". The
"endorsement" on the registration of this trade mark describes the mark as follows:
"The mark consists of three stripes of a colour different to the colour of the shoes to which they are applied.