Adidas AG and Another v Pepkor Retail Ltd (187/12) [2013] ZASCA 3; 2013 BIP 203 (SCA) (28 February 2013)

Adidas AG and Another v Pepkor Retail Ltd (187/12) [2013] ZASCA 3; 2013 BIP 203 (SCA) (28 February 2013)

The Supreme Court of Appeal found that the respondent's use of four parallel stripes on certain footwear closely resembled the appellants' registered three-stripe trademarks in configuration, colour contrast, and placement, creating a likelihood of confusion or deception among consumers. The stripes were used as trademarks, not mere decoration, and the fame and distinctiveness of the appellants' marks increased the risk of confusion. The respondent's get-up on specific products constituted passing off, as the similarities in appearance and lack of clear distinguishing marks would likely mislead the average purchaser into believing the goods were those of, or connected with, the...

Citation
[2013] ZASCA 3
Parties
Appellant: Adidas AG; Appellant: Adidas International Marketing BV; Respondent: Pepkor Retail Limited
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
28 February 2013
Case Number
187/12
Procedural Posture
Civil Appeal / Appeal From Western Cape High Court, Cape Town
Outcome
Appeal upheld with costs; order of the court a quo set aside and replaced with interdicts, removal of infringing marks, enquiries into damages and royalties, and costs awarded to appellants.
Judges
Brand, Heher, Petse, Southwood, Erasmus
Legal Topics
Trade Mark Infringement, Passing Off, Likelihood of Confusion, Distinctiveness of Trademark, Damages Enquiry, Get Up Comparison
Intellectual Property Commercial and Corporate Trade Mark Infringement Passing Off Likelihood of Confusion Distinctiveness of Trademark Damages Enquiry Get Up Comparison

Case Brief

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Parties

Adidas AG

Appellant

Adidas International Marketing BV

Appellant

Pepkor Retail Limited

Respondent

Procedural Posture

Civil Appeal / Appeal From Western Cape High Court, Cape Town

Legal Issues

  1. 1 Whether the respondent's use of two and four parallel stripes on footwear infringes the appellants' registered three-stripe trademarks under s 34(1)(a) of the Trade Marks Act 194 of 1993.
  2. 2 Whether the respondent's footwear constitutes passing off as the appellants' products.
  3. 3 Whether the stripes used by the respondent are trademark use or mere decoration.

Ratio Decidendi

The Supreme Court of Appeal found that the respondent's use of four parallel stripes on certain footwear closely resembled the appellants' registered three-stripe trademarks in configuration, colour contrast, and placement, creating a likelihood of confusion or deception among consumers. The stripes were used as trademarks, not mere decoration, and the fame and distinctiveness of the appellants' marks increased the risk of confusion. The respondent's get-up on specific products constituted passing off, as the similarities in appearance and lack of clear distinguishing marks would likely mislead the average purchaser into believing the goods were those of, or connected with, the...

Court Disposition

Appeal upheld with costs; order of the court a quo set aside and replaced with interdicts, removal of infringing marks, enquiries into damages and royalties, and costs awarded to appellants.

Orders

  • The respondent is interdicted and restrained from infringing the first applicant's registered trademarks by using four parallel stripes on footwear as represented in annexures TB8 and TB9 or any mark so nearly resembling the registered trademarks as to be likely to deceive or cause confusion.
  • The respondent is directed to remove the infringing marks from its footwear and, where removal is impossible, to deliver such footwear to the first applicant as provided for in s 34(3)(b) of the Act.