Adidas AG and Another v Pepkor Retail Ltd (14605/2009) [2011] ZAWCHC 444; [2012] 1 All SA 636 (WCC); 2011 BIP 220 (WCC) (5 December 2011)

Adidas AG and Another v Pepkor Retail Ltd (14605/2009) [2011] ZAWCHC 444; [2012] 1 All SA 636 (WCC); 2011 BIP 220 (WCC) (5 December 2011)

The court found that the applicants' registered trade marks are specifically for three parallel, equidistant stripes of equal width and contrasting colour. The respondent's use of two or four stripes, although similar in configuration, does not so nearly resemble the applicants' 3-stripe mark as to be likely to deceive or cause confusion among the average consumer. The court considered the widespread recognition of the Adidas 3-stripe mark and the presence of the respondent's own trade marks and devices on its footwear. It held that the features relied upon by the applicants, apart from the three stripes, are generic and commonly found in the footwear market. The applicants failed to...

Citation
[2011] ZAWCHC 444
Parties
Applicant: Adidas AG; Applicant: Adidas International Marketing BV; Respondent: Pepkor Retail Limited
Court
Western Cape High Court, Cape Town
Jurisdiction
South Africa
Judgment Date
5 December 2011
Case Number
14605/2009
Procedural Posture
Civil Application / Final Judgment
Outcome
Application for interdict dismissed with costs; counter-application for disclaimer dismissed with costs.
Judges
Allie
Legal Topics
Trade Mark Infringement, Passing Off, Distinctiveness of Trade Marks, Decorative Features, Disclaimer Registration
Intellectual Property Commercial and Corporate Trade Mark Infringement Passing Off Distinctiveness of Trade Marks Decorative Features Disclaimer Registration

Case Brief

Summary, issues, holding and outcome

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Parties

Adidas AG

Applicant

Adidas International Marketing BV

Applicant

Pepkor Retail Limited

Respondent

Procedural Posture

Civil Application / Final Judgment

Legal Issues

  1. 1 Whether the respondent's use of two or four stripes on footwear infringes the applicants' registered 3-stripe trade marks.
  2. 2 Whether the respondent's footwear constitutes passing-off as Adidas products or as being associated with Adidas.
  3. 3 Whether a disclaimer should be entered on the trade mark register limiting the applicants' exclusive rights to three stripes only.

Ratio Decidendi

The court found that the applicants' registered trade marks are specifically for three parallel, equidistant stripes of equal width and contrasting colour. The respondent's use of two or four stripes, although similar in configuration, does not so nearly resemble the applicants' 3-stripe mark as to be likely to deceive or cause confusion among the average consumer. The court considered the widespread recognition of the Adidas 3-stripe mark and the presence of the respondent's own trade marks and devices on its footwear. It held that the features relied upon by the applicants, apart from the three stripes, are generic and commonly found in the footwear market. The applicants failed to...

Court Disposition

Application for interdict dismissed with costs; counter-application for disclaimer dismissed with costs.

Orders

  • The respondent has not infringed the applicants' registered trade marks under trade mark numbers: 1959/000057; 1995/12283; 1980/06446 and 2001/18582.
  • The respondent has not passed-off its footwear as those of the applicants or as having an association with the applicants' footwear.