PlasconEvans Paints Limited v Van Riebeeck Paints (Pty) Ltd
1984 (3) SA 623 ([1984] 2 All SA 366) (A) Applied
28
Reckitt and Colman SA (Pty) Ltd v SC Johnson and Son SA (Pty) Ltd [1993]
1 All SA 27 (1993 (2) SA 307) (A) Applied
29
Verimark (Pty) Ltd v Bayerische Motoren Werke AktienGesellschaft;
Bayerische Motoren Werke AktienGesellschaft v Verimark (Pty) Ltd [2007]
JOL 19890 ([2007] ZASCA 53; [2007] SCA 53; 2007 (6) SA 263) (SCA)
Referred to
28
Europe
Adidas AG (Approximation of laws) [2008] EUECJ C102/07 (10 April 2008)
Referred to
28
Reed Executive Plc and others v Reed Business Information Ltd and others
[2004] EWCA Civ 159 Referred to
29
New Zealand
Advantage Group Ltd v ADV ECommerce Ltd [2002] NZCA 282 Applied
United States of America
29
Cincinatti Car Co v New York Rapid Transport Corp 66 F2d 592 Applied
28
VJ Doyle Plumbing Co v Doyle 120 Ariz 130 (Ct App 1978) Applied
29
View Parallel Citation
Judgment
HARMS DP:
[1] The appellant, Puma AG Rudolf Dassler Sport, instituted a trade mark infringement action against the
respondent, Global Warming (Pty) Ltd. Two trade marks were in issue. Puma sought relief by way of an
interdict and damages calculated on a notional royalty basis. The High Court, after hearing evidence,
dismissed the claim with costs. The appeal is with the leave of this Court.
[2] Puma relied on section 34(1)(a) of the Trade Marks Act 194 of 1993, which provides that the rights acquired by
registration of a trade mark are
Page 27 of [2010] 1 All SA 25 (SCA)
infringed by the unauthorised use in the course of trade in relation to goods or services in respect of which
the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive
or cause confusion.
[3] The issues on infringement are limited particularly because the two trade mark registrations were not
impinged. Both are registered in class 25 for footwear of all types and descriptions, and for clothing. Their
particulars are these:
(a)
The first mark, TM 1980/05551, consists of a device described in the admissions section of the
registration certificate as a "tapering stripe on the side of the shoe or boot as depicted". It runs from
the upper portion of the heel to meet the sole at the middle of the shoe. The stripe contains two dotted
lines that follow its curvature. They appear to consist of or be in the form of stitching. A disclaimer states
that the registration gives no right to the exclusive use of the stylised shoes as depicted by means of
dotted lines. The word PUMA appears above the stripe. PUMA is an associated word mark held under TM
78/05750. A representation of this mark is attached.
View Parallel Citation
(b)
The second, TM 1982/04607, consists of a similar device but differs from the first mark in the following
respects: the device is not limited to use on the side of a shoe; it is of one colour and there are no
dotted lines; and there is a blank space in the tapering stripe close to its widest end. The registration
contains an undertaking by Puma that, in use, the blank space appearing in the mark will be occupied
only by matter of descriptive or nondistinctive character, or by a registered trade mark, or it will be left
blank. Another difference between the marks is that the name mark PUMA does not form part of the
registered mark. Because of the poor quality of the photocopies in the record the attached
representation of��the mark does not reflect the blank space.
[4] Global is in the business of having shoes made for it on order, and marketing them. A photograph of the shoe
with the alleged infringing mark is attached to this judgment. The words "DT NEW YORK" appear on the
tongue and the side of the shoe. A stripe runs from the heel. The stripe tapers slightly and then splits in two
with a distinct intruding section, more or less like an inverted thumb, in a contrasting colour. One leg has a
curve in the direction of the heel. There are, as in the first registration, dotted lines but whether they are, in