When two doesn’t make three

Business Day - Business Law and Tax Review - - BUSINESS LAW & TAX REVIEW -

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.

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