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“Adidas v. Pepkor”

Trade Marks Act 194 of 1993, Secs. 15, 34(1) – Adidas AG and Adidas International Marketing BV v. Pepkor Retail Limited

  1. 1.

    One cannot use a trademark and then argue that it was used as ornamentation and that where the registered mark consists of three stripes it would be a question of fact whether the use of two or four stripes would be perceived as decorative or as trademark use.

  2. 2.

    Consumers are likely to interpret the mark, as it is used by the third party, as designating or tending to designate the undertaking from which the third party’s goods originate. If the use creates an impression of a material link between the product and the owner of the mark, there is infringement, otherwise not.

  3. 3.

    A trademark holder cannot informally extend the ambit of the registered trademarks. Each allegedly infringing mark must be compared with each registered mark (as recorded in the register) to determine whether deception of confusion is likely. It is the mark as it appears on the register that the right holder is entitled to protect.

  4. 4.

    The question of the likelihood of confusion or deception is a matter of first impression. The court must not consider the question of deception or confusion as if the purchaser of the goods will have had the opportunity of carefully considering the marks and even comparing them side by side. They must look at the marks as they will be seen in the marketplace and take into account a notional purchaser: a person of average intelligence, and proper eyesight, buying with ordinary caution.

  5. 5.

    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 competing products.

  6. 6.

    In order to succeed in passing off proceedings based upon an implied representation the aggrieved trader must establish, first, that the name, mark or get-up used by that trader has become distinctive of the trader’s goods or merchandise in that the public associates the name, mark or get-up with the goods or merchandise marketed by that trader and, secondly, that the name, mark or get-up used by the other trader is so used as to cause the public to be confused or deceived in the manner described.

  7. 7.

    Just as in the case of trademark infringement, the more distinctive the get-up is, or the greater the extent of its reputation, the greater the likelihood will be that the public will be confused or deceived.

  8. 8.

    When considering whether the public will be confused or deceived by an implied representation the court must postulate neither the very careful nor the very careless buyer, but an average purchaser, who has a good idea in his mind’s eye of what he means to get but not an exact and accurate representation of it. The court must also take into account that the purchaser will not necessarily have the advantage of seeing the products side by side and will not be alerted to fine points of distinction or definition. The court must further take into account that the purchaser may not be able to read simple words as there are many people in South Africa that are illiterate.

  9. 9.

    The law of passing off does not confer monopolies on successful get-ups. A trader may, to an extent, copy the successful get-up of a rival. The trader will, however, only avoid liability for passing off if he makes it perfectly clear to the public that the articles which he is selling are not the other manufacturer’s, but his own, so that there is no probability of the ordinary purchaser being deceived.

  10. 10.

    Passing off, unlike trademark infringement, requires that a comparison be made between the get-ups of the competing goods and not just the trade marks applied to those goods.

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Decision of the Supreme Court of Appeal 28 February 2013 – Case No. 187/12. “Adidas v. Pepkor”. IIC 44, 999–1000 (2013).

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