The Supreme Court of Appeal doesn't often get to hear trade mark cases.  So when it does hand down a trade mark judgment we pay attention.

In the case of Adidas v Pepkor (Pep Stores and Ackerman's for the benefit of the Woolworths' set) the main issue was this: Was Pepkor infringing Adidas's three-stripe trade mark registrations by selling four-stripe trainers? Pepkor's defence was that the four stripes that appeared on the shoes which it sold were decorative and not trade marks.  So yes, the 'non-trade mark use defence', the one that's become very popular since the Appeal Court held that Verimark's use of a BMW vehicle in a TV ad for a car polish amounted to incidental or non-trade mark use of the BMW logo (which was visible in the ad), and therefore not an infringement of BMW's registration for the logo. The court in the Adidas case, in the person of Judge Southwood, rejected this defence, saying: 'It seems to me that it will be very difficult to persuade a court that any mark applied to goods for "embellishment" or "decoration"... is not applied for the purposes of distinguishing the goods.'   He went on to say: 'If the use creates an impression of a material link between the product and the owner of the mark there is infringement, otherwise not.'  

The court felt that there was a likelihood of confusion. An interesting feature of this case was that  Adidas won a similar case way back in 1976 against a company called Harry Walt, but Pepkor argued that things had changed much since those days, and that the Adidas mark was now so famous that no-one seeing a four-stripe trainer would assume any connection with Adidas. Tosh said the judge:' In my view, the fact that the first appellants' three stripes trademarks are famous, does not justify a finding that there is no likelihood of deception or confusion because purchasers of the goods will see immediately that the respondent's marks are not the first appellant's marks. In my view the contrary is true. The more distinctive the trademark is, or the greater its reputation, the greater the likelihood that there will be deception or confusion where a similar mark is used on a competing product.'

It's worth noting that the court did hold that some non-athletic shoes sold by Pepkor - which bore two stripes - did not infringe the registrations because there was no likelihood of confusion.  The judgment's a step forward because it's finally put paid to this weird notion that if stripes appear on trainers – or brand names even appear on the front of t-shirts - it's not trade mark usage.  Never understood it myself!

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