When two doesn’t make three
stantially the same location between the sole and the reinforced area which supports the shoelace holes (with the necessary adjustment to accommodate four rather than three stripes), are displayed in colours which contrast with the background colour of the shoes, and have serrated edges. Thus, this court cannot simply count the number of stripes and determine as a matter of law that four stripes are not confusingly similar to three stripes.”
A total amount of $305m in damages was awarded in this case, thus one of the highest amounts awarded this far. However, Adidas was less successful in Europe, where the stripes used were seen to be merely decorative (with a few exceptions in specific countries).
Decisions of the Court of Justice of the European Union (CJEU) have a significant influence in SA. The CJEU’S approach is to establish whether the defendant’s use could harm the mark’s ability to indicate the origin of the plaintiff’s products, which would be the case where a material link is seen to exist between the parties’ respective products. On this basis it could perhaps be argued that a two-striped shoe cannot indicate origin. However, the US decision indicates that perceptions as to origin and confusion may differ in various parts of the world.
The Pepkor case highlights the seemingly paradoxical situation where a mark is found to be famous, yet qualifies for only limited protection.
The three-stripe pattern is exposed to consumers on a massive scale. Despite this, two- or four stripe-patterns will fall outside of the monopoly given to Adidas, as matters stand. In other words, unless the exact mark is used, there will be no infringement, with the ironic result being that Adidas seems to be victim of its own success. It will be interesting to see whether they will take the matter on appeal.
Wim Alberts is also professor of law at the University of Johannesburg.