Pretoria, 11 March 2013:The Supreme Court of Appeal recently
handed down a judgment in terms of which Pepkor was interdicted
from infringing the well-known adidas THREE STRIPE trademark. In
addition to granting the interdict, Pepkor was instructed to remove
the infringing trade marks from its footwear and, where the
infringing marks couldn't be removed from the footwear, to
deliver up the infringing footwear to adidas. The Court also
directed that an enquiry be held for purposes of determining the
amount of damages suffered as a result of the infringement.
The evidence showed that the world famous adidas THREE STRIPE
trademark was designed and developed by athlete and shoemaker Adi
Dassler, for athletes competing at the Olympic Games. Through the
years many prominent athletes have been associated with the adidas
trademark, making it highly recognised and extremely popular. It is
most notably worn by many soccer players during high-profile events
like the FIFA World Cup and European Soccer Championships.
Pepkor chose to offer for sale footwear which also featured
stripes; more particularly four parallel stripes which bore a
striking resemblance to theadidas THREE STRIPEtrademark. After a
demand by adidas, Pepkor refused to stop selling its sporting
footwear bearing the stripes. Adidas had registered its trademark
years before and had relied on these registered rights to institute
legal proceedings against Pepkor.
Pepkor defended its use of the stripes by explaining that the use
of stripes was decorative or for embellishment and not intended to
be used as a trademark. It was accepted by the Court that
manufacturers of sportswear apply a variety of stripes to their
footwear. However, should the usage of stripes be such that members
of the public would be deceived and/or confused into believing that
there is a link between the product bearing stripes and adidas,
same would constitute trade mark infringement.
Pepkor also defended its use of the stripes by arguing that the
adidas THREE STRIPE trademark was so famous that there was no
likelihood that consumers would be deceived and/or confused to the
effect that footwear bearing stripes was associated with or linked
to the adidas footwear. This argument was not accepted by the
Court.
The conclusion reached was that a greater reputation in a
trademark is likely to result in consumers believing that a
competing product bearing a similar trade mark comes from the same
source. The confusion by members of the public that products
bearing a similar mark to a registered trademark are products of
the trademark proprietor's need only be fleeting for there to
be trademark infringement.
Louise Myburgh, Partner, Spoor & Fisher says, "Adidas was
not only successful in proving that its registered trademark had
been infringed; it also proved that consumers would believe that
the Pepkor footwear bearing four stripes was adidas footwear or
connected to the brand."
She further adds, "Adidas' success in protecting its
Intellectual Property is confirmation that these rights are well
protected in terms of legislation in South Africa. This is vital
for all traders who need assurance that the investment in their
trademarks will be protected when these rights are impinged
on."
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.