When two doesn’t make three

Lo­cal court fol­lows Euro­pean ex­am­ple and Adi­das brand loses in­fringe­ment claim to Pep­kor

Business Day - Business Law and Tax Review - - FRONT PAGE - ILSE DU PLESSIS & WIM AL­BERTS

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-

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