Sportshoe (Pty) Ltd. v PEP Stores (SA) (Pty) Ltd. (214/88) [1989] ZASCA 140 (15 November 1989)

Sportshoe (Pty) Ltd. v PEP Stores (SA) (Pty) Ltd. (214/88) [1989] ZASCA 140 (15 November 1989)

The Supreme Court of Appeal held that the registration of 'GRAND PRIX' as a trade mark was valid, as the mark was sufficiently distinctive and not merely laudatory or generic. The use of the mark by Pep Stores, even prior to formal assignment, was authorised and subject to quality control, preserving its distinctiveness. Assignments without goodwill did not invalidate the mark, as reputation in the mark could be built up by the assignee. On the infringement issue, the Court found that Sportshoe's use of 'GRANDPRIX' on its shoes, marketed through Adidas, was not likely to cause confusion or indicate a connection with Pep, given the prominent Adidas branding, different sales outlets, and...

Citation
[1989] ZASCA 140
Parties
Appellant: Sportshoe (Proprietary) Limited; Respondent: PEP Stores (SA) (Proprietary) Limited
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
15 November 1989
Case Number
214/88
Procedural Posture
Civil Appeal / Appeal From Cape Provincial Division; Judgment on Application and Counter Application
Outcome
Appeal against dismissal of counter-application dismissed; appeal against grant of interdict application succeeds.
Judges
Corbett, Nestadt, Milne, Eksteen, Nicholas
Legal Topics
Trade Mark Registration, Distinctiveness, Licensing of Trade Marks, Expungement of Trade Mark, Passing Off, Assignment Without Goodwill
Intellectual Property Commercial and Corporate Trade Mark Registration Distinctiveness Licensing of Trade Marks Expungement of Trade Mark Passing Off Assignment Without Goodwill

Case Brief

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Parties

Sportshoe (Proprietary) Limited

Appellant

PEP Stores (SA) (Proprietary) Limited

Respondent

Procedural Posture

Civil Appeal / Appeal From Cape Provincial Division; Judgment on Application and Counter Application

Legal Issues

  1. 1 Whether the registration of the trade mark 'GRAND PRIX' was made without sufficient cause or is wrongly remaining on the register.
  2. 2 Whether the trade mark 'GRAND PRIX' lacked distinctiveness or was laudatory at the time of registration.
  3. 3 Whether the trade mark had lost distinctiveness due to licensing and use by parties other than the registered proprietor.

Ratio Decidendi

The Supreme Court of Appeal held that the registration of 'GRAND PRIX' as a trade mark was valid, as the mark was sufficiently distinctive and not merely laudatory or generic. The use of the mark by Pep Stores, even prior to formal assignment, was authorised and subject to quality control, preserving its distinctiveness. Assignments without goodwill did not invalidate the mark, as reputation in the mark could be built up by the assignee. On the infringement issue, the Court found that Sportshoe's use of 'GRANDPRIX' on its shoes, marketed through Adidas, was not likely to cause confusion or indicate a connection with Pep, given the prominent Adidas branding, different sales outlets, and...

Court Disposition

Appeal against dismissal of counter-application dismissed; appeal against grant of interdict application succeeds.

Orders

  • The appeal against the dismissal of the counter-application is dismissed.
  • The appeal against the grant of the application succeeds.