footwear that allegedly bear the infringing marks are the following:
(a)
The LDS sport shoe reflected on Annexure "TB8".
(b)
The men's ATH leisure shoe depicted on Annexure "TB9".
(c)
The soccer boot depicted on Annexure "TB10".
(d)
The boys ATH leisure shoe depicted on Annexure "TB11".
Page 643 of [2012] 1 All SA 636 (WCC)
(e)
The Hang Ten shoe depicted on Annexure "TB12".
(f)
The girls Must Have shoe depicted on Annexure "TB13".
[15] The applicants allege that the respondent, by offering the offending footwear, is infringing the first applicant's
rights in the registered trade marks in terms of the provisions of section 34(1)(a) of the Trade Marks Act, 1993
("the Act") alternatively section 34(1)(b).
[16] Section 34(1)(a) and (b) of the Act provides as follows:
"34
Infringement of registered trade mark
(1)
The rights acquired by registration by registration of a trade mark shall be infringed by:
(a)
the unauthorised use in the course of trade in relation to goods or services in respect of which the
trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely
to deceive or cause confusion;
(b)
the unauthorised use of a mark which is identical or similar to the trade mark registered, in the
course of trade in relation to goods or services which are so similar to the goods or services in
respect of which the trade mark is registered, that in such use there exists the likelihood of
deception or confusion; . . ."
[17] The primary difference between section 34(1)(a) a n d section 34(1)(b) i s t h a t w h e r e a s section 34(1)(a)
provides that the allegedly infringing mark must have been used "in relation to goods or services in respect of
which the trade mark is registered", section 34(1)(b) provides that the infringing mark must have been used
on goods which are "similar" to the goods or services in respect of which the trade mark is registered. Both
section 34(1)(a) and section 34(1)(b) cannot be contravened at the same time. (See Commercial Auto Glass
(Pty) Ltd v Bayerische Motoren Werke Aktiengesellschaft 2007 (6) SA 637 (SCA) at 643F [also reported at [2007]
4 All SA 1331 (SCA) Ed].)
[18] Applicants allege that the respondent's shoes, on which the alleged infringing marks are used, are goods in
respect of which the registered trade marks are registered.
[19] The respondent argues that the registration of two of the four registered trade marks namely, registered
trade mark numbers 1957/1959 and 1980/06446 concern "sporting footwear of all kinds" and that, except for
the respondent's football boot, the other three of the respondent's shoes that are alleged to bear infringing
marks are leisure shoes and not sporting shoes. The respondent alleges that the marks on those three shoes
cannot infringe these two registered trade marks.
[20] It is clear from the provisions of sections 34(1)(a) a n d (b) of the Act, the protection afforded by the
registration of a trade mark is not limited to the use of the offending mark on goods or services in respect of
which the trade mark is registered but also extends to the use of the offending mark on similar goods or
services the use would cause the likelihood of deception or confusion.
[21] The issue between the parties concerning infringement, is limited to the likelihood of deception or confusion.
(a)
In terms of section 34(1)(a) of the Act the question is whether the marks on the respondent's footwear
are "identical" to or are "so
Page 644 of [2012] 1 All SA 636 (WCC)
nearly resembling" the registered trade marks "as to be likely to deceive or cause confusion".
(b)
In terms of section 34(1)(b) the question is whether the marks on the respondent's footwear are
"identical or similar to" the registered trade marks where, in their use in relation to goods or services
which are so similar to the goods or services in respect of which the trade marks are registered, there
exists "the likelihood of deception or confusion".
[22] The onus is on the party alleging infringement to show the likelihood of deception or confusion. The applicant
has to show that a substantial number of people will probably be confused about the origin of the goods or
about the connection between the offending goods and those of the registered trade mark owner. (See
Plascon Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 640G641E [also reported at
[1984] 2 All SA 366 (A) Ed]) where it is said:
"In an infringement action the onus is on the plaintiff to show the probability or likelihood of deception or confusion. It
is not incumbent upon the plaintiff to show that every person interested or concerned (usually as customer) in the
class of goods for which his trade mark has been registered would probably be deceived or confused. It is sufficient if
the probabilities establish that a substantial number of such persons will be deceived or confused. The concept of
deception or confusion is not limited to inducing in the minds of interested persons the erroneous belief or impression
that the goods in relation to which the defendant's mark is used are the goods of the proprietor of the registered
mark, i.e. the plaintiff, or that there is a material connection between the defendant's goods and the proprietor of the
registered mark; it is enough for the plaintiff to show that a substantial number of persons will probably be confused