South Africa: A Converse Decision

Last Updated: 7 November 2014
Article by Waldo Steyn

Most Read Contributor in South Africa, September 2018

Converse, the Nike-owned footwear manufacturer, has recently sued 31 different retailers for trade mark infringement. In each case, Converse alleges that the retailer is selling footwear that infringes trade mark registrations that it has for the appearance of its famous Chuck Taylor shoes. Most readers will know that product features like shape, pattern, configuration and ornamentation can be registered as trade marks, in much the same way that more conventional identifying features like brand names and logos can be registered.

Converse's decision to launch these legal proceedings is interesting. In the first place, trade mark registrations for product features like shape and pattern are still relatively rare, and cases involving such registrations are never easy. One issue that often comes up is this: are the features that've been registered functional? If so, they won't enjoy protection. Another issue that comes up is this: do the features that've been registered in fact act as indicators of source, in other words trade marks? To put it differently, do consumers make assumptions about the source of the product when they see those features? Or, to put it into context, will consumers seeing shoes that have some of the features of Converse shoes – such as a rubber toe front and black stripes - assume that those shoes are Converse shoes or in some way linked with Converse?

In South Africa we had a case involving trade mark registrations that covered features of pattern or ornamentation applied to shoes not that long ago. In this case - which went all the way to the Supreme Court of Appeal - Adidas successfully sued Pepkor for using a four-stripe motif on footwear, something that the court felt was confusingly similar to Adidas's famous three-stripe motif. Interestingly, the court rejected Pepkor's suggestion that it had applied the four-stripe motif simply as adornment or embellishment, rather than as a source indicator. The court had no difficulty with the notion that consumers understand that shoe manufacturers use stripes on shoes as trade marks.

What's equally interesting, I think, is the fact that Converse decided to go after so many retailers, a list that includes some very big names like Walmart and Kmart. That's interesting why? Because companies like Walmart must surely either be significant customers or potential customers of a company like Converse. This highlights a real dilemma that trade mark owners that are manufacturers have – they are often very dependent on the goodwill of major retailers. So suing them doesn't always make great sense.

This problem comes up a lot in the context of supermarket own-label brands. Readers will be aware that supermarkets often sell their own-label brands in competition with the established brands that they sell. In many cases the own-label brands look remarkably similar to the established brands, and the products are often sold side-by-side. In a recent article we discussed how, although this does occur in South Africa, this is a particularly contentious issue in the UK. Some people question whether there is any consumer confusion, pointing out that the own-label brands invariably feature different brand names and that, in any event, consumers are so accustomed to the concept of own-label brands that they know what to look out for. This may be so, but there's no doubt that supermarkets do copy the get-ups of established brands for a reason. Perhaps to create the impression that their product is of the same quality as that of the established brand!

There are legal steps that the owner of the established brand can take. A product get-up - which might incorporate features like colour, shape and typestyle - can be registered as a trade mark. This means that, even if the brand name is not copied, there still might be a case of trade mark infringement. There may be a case of passing off. There may be a case of copyright infringement. There may even be recourse under the Code of the Advertising Standards Authority (ASA). But it's a rare manufacturer who's prepared to take on a retailer who buys large quantities of its product. Especially a retailer who happens to also use the manufacturer to make its own-label product– it's a weird thing, but many of the own-label products that you see in supermarkets are in fact manufactured for the supermarkets by the owners of the established brands.

So what does the trade mark owner do? Does it simply accept that certain retailers will sail very close to the wind or, to put it more bluntly, infringe their trade mark rights? Does it negotiate with retailers, put it to them that intellectual property is important for everybody, and that if they persist with infringing the rights of manufacturers this will in due course lead to a situation where no-one's rights are respected, including those of the retailers? Does it mediate, something which of course needs the cooperation of both parties? Or does it do what Converse has done, take a number of important retailers to court? What this does do, of course, is send out a very strong message. But it's risky too, not only because it might alienate customers, but also because there's no guarantee that the company will win in court.

What is certain is that the fact that Converse has taken this pretty drastic step shows just how seriously it takes its intellectual property.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions