adidas AG and Another v Pepkor Retail Ltd (187/12) [2013] ZASCA 3

adidas AG and Another v Pepkor Retail Ltd (187/12) [2013] ZASCA 3

Facts

adidas AG and Another (adidas) are the owners of four well-known registered trademarks for parallel stripes applied to their sporting footwear. Pepkor Retail Limited (Pepkor) is a South African retailer that sells a variety of products, including sporting footwear. Pepkor sold sporting footwear with two and four parallel stripes.

adidas sued Pepkor for trade mark infringement and passing off. Adidas claimed that Pepkor's use of two and four parallel stripes on its sporting footwear infringed its registered trademarks and was likely to deceive or cause confusion among consumers. Adidas also claimed that Pepkor's get-up, incorporating four stripes, was a passing off.

Issues

The main issues in the case were:

• Whether Pepkor's use of two and four parallel stripes on its sporting footwear infringed adidas' registered trademarks; and
• Whether Pepkor's get-up, incorporating four stripes, was a passing off.

Reasons

The Supreme Court of Appeal (SCA) held that Pepkor's use of four parallel stripes on its sporting footwear infringed adidas' registered trademarks and that Pepkor's get-up, incorporating four stripes, was a passing off.

Trade mark infringement

The SCA explained that trade mark infringement occurs when a person uses a mark in the course of trade in relation to goods or services in a way that is likely to deceive or cause confusion. The court found that Pepkor's use of four parallel stripes on its sporting footwear was likely to deceive or cause confusion among consumers because consumers would be likely to think that the footwear was manufactured or endorsed by adidas.

Passing off

The SCA also explained that passing off occurs when a person misrepresents to the public that their goods or services are the goods or services of another person. The court found that Pepkor's get-up, incorporating four stripes, was a passing off because it was likely to deceive or cause confusion among consumers into thinking that the footwear was manufactured or endorsed by adidas.

Conclusion

The SCA granted adidas an interdict interdicting and restraining Pepkor from infringing adidas' registered trademarks and from passing off its footwear as adidas' footwear. The court also ordered Pepkor to pay adidas' costs, including the costs of two counsel.

Summary

The case of adidas AG and Another v Pepkor Retail Ltd (187/12) [2013] ZASCA 3 is a landmark case in South African trade mark law. The case is particularly important for its analysis of the following issues:

• The test for trade mark infringement;
• The test for passing off; and
• The application of these tests to the use of parallel stripes on sporting footwear.

The SCA's decision that Pepkor's use of four parallel stripes on its sporting footwear infringed adidas' registered trademarks is significant. The decision means that businesses cannot use well-known trademarks of other businesses on their products without the permission of the trademark owners.

The SCA's decision that Pepkor's get-up, incorporating four stripes, was a passing off is also significant. The decision means that businesses cannot use the get-up of other businesses on their products to deceive or confuse consumers into thinking that their products are the products of the other businesses.