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
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