When two doesn’t make three
Local court follows European example and Adidas brand loses infringement claim to Pepkor
THE divergent views that courts can take of the same issue was recently well illustrated in a local court case where Adidas launched trade mark infringement proceedings in the Western Cape High Court based on its well-known threestripe trade mark. Despite international recognition of this mark, the court found in favour of the other party, Pepkor, who used a four-stripe design on shoes sold by them.
The dominant features of the Adidas mark are three lateral stripes, parallel to and equidistant from each other. The stripes are also of the same width. The Pepkor shoe shared these characteristics, with the exception of having either two or four stripes. Adidas argued that the public would be confused between these two products and submitted evidence by way of a survey showing that many respondents interviewed had identified the Pepkor shoes as being that of Adidas. Pepkor, on the other hand, argued that it used the two/four-stripe designs as mere decorations.
The court referred to the substantial amount of exposure enjoyed by Adidas’s products and held that con- sumers are sufficiently discerning to distinguish Adidas’s stripes from the two or four-stripe designs used by Pepkor. The essential part of the ruling is that Adidas does not have a monopoly in parallel stripes of an equal width and distance on the surface of shoes, irrespective of the number of stripes used or their established recognisable usage of them. In addition, Adidas had never registered two or four-stripes as trade marks.
This ruling is in stark contrast to decisions in other parts of the word, notably in Oregon in the US, in the Payless case, where Adidas was successful in a matter where two- and four-stripe marks were held to be infringing.
It is interesting to compare the US court’s view with that of the Pepkor decision. In the former, it based stating its view on the likelihood of confusion, that: “Although three stripes obviously do not equal four stripes, the issue is not simply the number of stripes. Instead, the issue is whether the total effect of the allegedly infringing design is likely to cause confusion in the minds of an ordinary purchaser. While there can be no debate that defendants’ four stripe mark has one stripe more than Adidas’s Three Stripe Mark, so too there can be no debate that many of the other features of the stripes displayed on defendants’ [shoes] are strikingly similar — if not identical — to the features of the Three Stripe Mark displayed on [Adidas’s] Superstar IIK and Campus II models.... The stripes are equal in size, are placed equidistant at a similar or identical angle, are in sub-