Adidas Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd

• Judge: Botha J
• Judgment Date: 06 November 1975
• Citation: 1976 (1) SA 530 (T)
• Hearing Date: 13 August 1975
• Court: Transvaal Provincial Division

Botha, J.:

The plaintiff is a firm incorporated with legal F personality in West Germany. It carries on business as manufacturers of, inter alia, sporting footwear, which is marketed in this country and elsewhere under the name 'adidas'. The defendant is a locally incorporated company carrying on business as indent agents and manufacturers' representatives. During 1973 the defendant imported a consignment of sporting G footwear from Hong Kong and sold a number of the shoes in this country. The plaintiff claims that the defendant's conduct in so doing constituted an infringement of the plaintiff's rights arising from certain registered trade marks and a passing off of the goods in question as those of the plaintiff. Accordingly H the main relief claimed by the plaintiff is an interdict restraining the defendant from infringing the rights of the plaintiff acquired by the registration of its trade marks, and an interdict restraining the defendant from passing off its goods as being those of the plaintiff.

The two causes of action put forward by the plaintiff require separate consideration. In infringement proceedings pursuant to the provisions of sub-para. (a) of sec. 44 (1) of the Trade Marks Act, 62 of 1963, the enquiry is directed at a comparison between the registered mark as such and the allegedly offending mark as such; in passing off proceedings under the common law a comparison is involved between the whole get-up of the

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goods as marketed by the plaintiff and the whole get-up of the defendant's goods (Stellenbosch Farmers' Winery Ltd. v. Stellenvale Winery (Pty.) Ltd., 1957 (4) SA 234 (C) at p. 240B - E). The enquiry into alleged infringement is confined A within much narrower limits than the enquiry into alleged passing off, and care must be taken to exclude from the former enquiry facts and circumstances which are germane to the latter enquiry but irrelevant and inadmissible in the former. The importance of the distinction in a case such as the present will appear from what follows. I shall deal first with the claim based on, alleged infringement.

B The plaintiff is the registered proprietor in this country of the following trade marks:

1.

No. 1959/57, in part A, class 25 (Schedule IV), in respect of sporting footwear of all kinds. The mark consists of three lateral stripes of a colour different to the colour of the shoes to which they are applied. The three stripes run parallel from the C fastening downwards to the sole of the shoe and appear on both sides thereof as illustrated in the representation filed.

2.

No. 71/1242, in part A, class 25 (Schedule IV), in respect of clothing including garments for sportsmen, training suits and shoes. The mark consists of three stripes on the arm and leg of garments or on the inner and outer sides of footwear.

D The registered pictorial representation of the second mark, as applied to footwear, is to all intents and purposes identical with the representation filed with the registration of the first mark. The present case concerns footwear only. Accordingly it will be convenient in what follows to refer to E the plaintiff's two marks collectively as if they were one.

The characteristics of the plaintiff's mark, as enumerated by counsel for the plaintiff and accepted by counsel for the defendant, are as follows:

1.

There are three lateral stripes.

2.

The colour of the stripes differs from the colour of the shoes to which they are applied.

3.

F The stripes are parallel to each other.

4.

They run from the fastening of the shoe downwards to the sole.

5.

They appear on both sides of the shoe.

6.

They are equidistant from each other.

7.

They are of the same width.

8.

G They are separated by spaces approximately equivalent to their own width.

9.

They run obliquely in a direction towards the heel of the shoe, if looked at from the top.

The visual impression conveyed by the plaintiff's mark was demonstrated by means of a number of pictures and specimen shoes handed in as exhibits.

H The allegedly offending shoes were a batch of 201 pairs which the defendant caused to be imported and to be placed on the local market. Although these shoes, of which some 50 pairs have actually been sold to the public, were consigned directly to retailers and did not pass through the defendant's hands, it was common cause on the pleadings that they were sold and offered for sale by the defendant itself, and the trial was conducted upon that footing. Although of different sizes, the shoes were all of the same type and identical in appearance as illustrated by means of a specimen handed in as an exhibit. The mark on their, of which the plaintiff complains,

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consists of four lateral stripes. These four stripes display the same features as do the three stripes of the plaintiff's mark; the characteristics of the plaintiff's mark in relation to its three stripes, as listed in paras. 2 to 9 above, coincide with the characteristics of the four stripes of the A mark on the shoes marketed by the defendant.

In its pleadings, the plaintiff made allegations in the alternative so as to enable it to rely on either sub-para. (a) or sub-para (b) of sec. 44 (1) of the Act. The effect of the defendant's plea to these allegations was obscure, but during the course of the trial counsel for the defendant made it clear that the defendant did not in fact dispute that the use of the B allegedly offending mark (to which I shall henceforth refer, for the sake of convenience, as 'the defendant's mark') was use of it as a trade mark, nor that such use was unauthorised by the plaintiff and in relation to goods in respect of which the plaintiff's mark was registered. Hence I need concern myself only with the provisions of sub-para. (a) C of sec. 44 (1), and in that respect the only issue for decision is whether the defendant's mark is 'a mark so nearly resembling' the plaintiff's mark 'as to be likely to deceive or cause confusion'.

The onus is on the plaintiff to prove a probability of deception or confusion. The onus can be discharged by showing that there is a likelihood that a substantial number of people who buy or are interested in sporting footwear will be confused D as to whether the defendant's shoes are the products of the plaintiff, or as to the existence or non-existence of a material connection between the defendant's shoes and the plaintiff as a manufacturer of sporting footwear (Oude Meester Groep Bpk. and Another v. SA. Breweries Ltd.; SA Breweries Ltd. and Another v. Distillers Corporation (S.A.) Ltd. and Another, 1973 (4) SA 145 (W) at p. 160G).

E A comparison of the marks in question here must be preceded by a discussion of the principles governing the basis upon which the comparison is to be made. The main argument advanced by counsel for the defendant in this connection arose from certain evidence elicited in the cross-examination of the witness Knight, who was called by the plaintiff to prove the reputation of the plaintiff's products in relation to the claim F based on passing-off. In brief, this evidence was to the following effect: 'adidas' sporting footwear was widely known amongst sportsmen as a product of high quality; the different types of 'adidas' shoes have the reputation of being carefully designed and particularly suited for the specific purpose for which they are required; to a certain extent the name 'adidas' G has become synonymous with 'sport' and with the idea in that context of 'the shoe for the particular purpose'; the name 'adidas', with its characteristic lettering in the lower key, invariably appears on all the plaintiff's products and in its advertisement material; although the use of the three stripes of the plaintiff's mark is coupled with the name 'adidas', the emphasis is always on the latter in the marketing and the advertising of the plaintiff's goods; the name 'adidas' is really a form of trade mark indicative of the plaintiff's H products. By contrast, the shoes marketed by the defendant do not bear the name 'adidas' and in fact have a tag on the lower part of the heel with the name 'Beaver'.

The argument for the defendant was that in comparing the two marks the Court should not only consider the two marks by themselves, but that regard should be had to the manner in which the marks have actually been used. Counsel for the defendant contended that the plaintiff has for many years

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used the name 'adidas', although unregistered, in conjunction with and as part and parcel of the plaintiff's registered mark, and that the probability of deception or confusion accordingly had to be tested on the basis of the registered mark as A qualified in use by the...