The 1st Applicant is the proprietor of a registered SA Trade mark numbers 1959/ 000057, 1995/12283, 1980/06446 AND 2001/18582 all of which are versons of adidas – very well known 3 stripe trade mark.
The 1st applicant’s products bearing those marks are marketed and sold in SA and globally. The 1st Applicant is Adidas AG, was established in accordance with the provisions of laws of Germany.
It is the parent company of the adidas group of companies. The 1st applicant is responsible for the management and licensing of adidas and other ntellectual Proprty rights globally and includes the enforcement of Adidas Trademark and other IPR .
The 2nd applicant Adidas International Markeing BV, a juristic first established in accordance with the laws of Netherlands . The second applica nt is wholly owned subsidiary of the 1st Applicant. The Respondent is a SouthAfrican Company .
The applicant’s case is that the respondent in the conduct of its business was infringing the registered trade marks and was passing off his goods as being those of the applicant or being connected in the cause of trade with the applicant.The applicant thus sought that the respondent be restrained from infringing upon the trademark it so registered and consisting of 2 or 4 parallel stripes of a color or material different from the colour or material of the footwear upon which they are placed in a particular configuration as to likely deceive or create confusion.
1. Whether the marks of the Respondent’s footwear are identical or are so nearly resembling the registered trademarks as to be likely to deceive or cause confusion
RESOLUTION OF ISSUE
The judge was of the view that even if the fact about the Respondent’s trade marks or device or brand name are objectively meaningless or generic the ,judge could not also conclude that they do not serve to distinguish respondent’s footwear from Applicant’s footwear.
The court was of the view that the identification of what applicants’ trade mark is, is a question that the court has to first answer before it can make a comparison between the marks of the applicants and the marks of the respondent.
The Respondents submitted that the mark that the applicants set out to register and infact registered encompassed 3- stripes only. It did not seek to register any combination of 2or 4 stripes.
Accordingly, the court was of the view the shoes of the respondent bearing 2 and 4 stripes combinations do not so nearly resemble the 3-stripe trade mark of the applicants as tobe likely to deceive or cause confusion.
The court further found that the use of the registered mark, the name Adidas and its device are disputedly distinctive of applicant’s footwear. The get-up features that the applicants claim are distinctive of its footswear were challenged by the respondent on the basis that they are genric and occur commonly in footwear market.
Although the applicants alleged that each label of origin on each of respondent’s offending footwear are generic names or names that are not distinctive, it has not been able to sthow that despite the presence of these labels and the absence of the Adidas device, the average consumer is likely to be confused to the point that the association may be made between respondent’s footwear and Adidas’ brand of footwear.
It was ordered
1. That the respondent had not infringed the applicants’ trade marks registered under trade mark numbers: 1959/000057; 1995/12283;1980/06446 and 2001/18582
2. The respondent did not passed-off its footwear as those of the applicants or as having an association with the footwear of the applicants.
3. The application for an interdict is dismissed with costs.
4. The counter-application for the entry of a disclaimer against the 1st Applicant’s registered trademark is dismissed with cost.