Clipsal Australia Pty Ltd v Trust Electrical Wholesalers [2007] SCA 24 (RSA)

Clipsal Australia Pty Ltd v Trust Electrical Wholesalers [2007] SCA 24 (RSA)

Facts

Clipsal Australia Pty Ltd (Clipsal) was the proprietor of a registered design for a set of electrical accessory plates with surrounds. Trust Electrical Wholesalers (Trust) sold a set of electrical accessory plates with surrounds that Clipsal alleged infringed its registered design.

Clipsal sued Trust for infringement of its registered design. The High Court dismissed Clipsal's claim, finding that the design was not new or original and that it had not been infringed by Trust.

Clipsal appealed to the Supreme Court of Appeal (SCA).

Issues

The main issues in the case were:

• Whether the design was new and original; and
• Whether the design had been infringed by Trust.

Reasons

The SCA held that the design was new and original and that it had been infringed by Trust.

Novelty and originality

The SCA found that the design was new because it had not been disclosed to the public before the priority date of the design application. The SCA also found that the design was original because it was not substantially different from what had gone before.

Infringement

The SCA found that Trust's product infringed Clipsal's registered design because it was substantially similar to the registered design. The SCA found that the differences between the two designs were minor and that they did not alter the overall impression produced by the designs.

Conclusion

The SCA overturned the High Court's decision and found that Trust had infringed Clipsal's registered design. The SCA granted an injunction restraining Trust from infringing the design.

Summary

The case of Clipsal Australia Pty Ltd v Trust Electrical Wholesalers [2007] SCA 24 (RSA) is a landmark case in South African law. The case is particularly important for its analysis of the following issues:

• The requirements for novelty and originality in registered designs; and
• The test for infringement of registered designs.

Requirements for novelty and originality

The case established that a registered design must be both new and original in order to be valid. Novelty means that the design must not have been disclosed to the public before the priority date of the design application. Originality means that the design must be substantially different from what has gone before.

Test for infringement of registered designs

The case established that the test for infringement of registered designs is a visual test. The court must ask whether the infringing design is substantially similar to the registered design. If the infringing design is substantially similar to the registered design, then it will be found to infringe, even if there are minor differences between the two designs.

Impact of the Case

The case of Clipsal Australia Pty Ltd v Trust Electrical Wholesalers [2007] SCA 24 (RSA) has had a significant impact on the law of registered designs in South Africa. The case has clarified the requirements for novelty and originality in registered designs and the test for infringement of registered designs.

Buzbee (Pty) Ltd v Registrar of Patents 2010 BIP 42 (CP)

Buzbee (Pty) Ltd v Registrar of Patents 2010 BIP 42 (CP)

Facts

Buzbee (Pty) Ltd (Buzbee) applied to the Registrar of Patents (the Registrar) for two patents. The Registrar granted the patents, but later revoked them on the grounds that Buzbee had failed to file its counterstatement in time in response to a revocation application filed by a third party.

Buzbee appealed the Registrar's decision to the Cape High Court.

Issues

The main issue in the case was whether the Registrar was entitled to revoke Buzbee's patents on the grounds that Buzbee had failed to file its counterstatement in time.

Reasons

The Cape High Court held that the Registrar was not entitled to revoke Buzbee's patents on the grounds that Buzbee had failed to file its counterstatement in time. The court found that the Registrar's power to revoke patents was limited to the circumstances specified in the Patents Act 57 of 1978 (the Act). The court also found that the Act did not authorize the Registrar to revoke patents on the grounds that the counterstatement in a revocation application had not been filed in time.

The court found that the Registrar's decision to revoke Buzbee's patents was unreasonable and that it had violated Buzbee's right to a fair hearing. The court also found that the Registrar's decision had caused Buzbee commercial harm.

Conclusion

The court overturned the Registrar's decision and ordered the Registrar to reinstate Buzbee's patents.

Summary

The case of Buzbee (Pty) Ltd v Registrar of Patents 2010 BIP 42 (CP) is a landmark case in South African law. The case is particularly important for its analysis of the powers of the Registrar of Patents under the Patents Act 57 of 1978 (the Act).

Powers of the Registrar of Patents

The case established that the Registrar of Patents has limited powers to revoke patents. The Registrar can only revoke a patent if it is satisfied that one of the grounds for revocation specified in the Act is present.

Failure to file counterstatement in time

The case established that the failure to file a counterstatement in time in response to a revocation application is not a ground for revoking a patent. The Act does not authorize the Registrar to revoke patents on the grounds that the counterstatement in a revocation application has not been filed in time.

Right to a fair hearing

The case established that the Registrar must give patentees a fair hearing before revoking their patents. This includes giving patentees a reasonable opportunity to file a counterstatement in response to a revocation application.

Commercial harm

The case established that the Registrar can be held liable for commercial harm caused by its unreasonable decisions.

Impact of the Case

The case of Buzbee (Pty) Ltd v Registrar of Patents 2010 BIP 42 (CP) has had a significant impact on the law of patents in South Africa. The case has established the limits of the Registrar of Patents' power to revoke patents. The case has also established that the failure to file a counterstatement in time in response to a revocation application is not a ground for revoking a patent. The case has also established that the Registrar must give patentees a fair hearing before revoking their patents and that the Registrar can be held liable for commercial harm caused by its unreasonable decisions.

University of Pretoria v Registrar of Patents 2011 BIP 41 (CP)

University of Pretoria v Registrar of Patents 2011 BIP 41 (CP)

Facts

The University of Pretoria (the University) filed two patent applications with the Registrar of Patents (the Registrar). The Registrar refused to accept the applications on the grounds that they had not been accompanied by the required renewal fees. The University appealed the Registrar's decision to the Cape High Court.

Issues

The main issue in the case was whether the Registrar had the power to refuse to accept the University's patent applications on the grounds that they had not been accompanied by the required renewal fees.

Reasons

The Cape High Court held that the Registrar did not have the power to refuse to accept the University's patent applications on the grounds that they had not been accompanied by the required renewal fees. The court found that the Registrar's power to refuse to accept patent applications was limited to the circumstances specified in the Patents Act 57 of 1978 (the Act). The court also found that the Act did not authorize the Registrar to refuse to accept patent applications on the grounds that the required renewal fees had not been paid.

Conclusion

The court overturned the Registrar's decision and ordered the Registrar to accept the University's patent applications.

Summary

The case of University of Pretoria v Registrar of Patents 2011 BIP 41 (CP) is a landmark case in South African law. The case is particularly important for its analysis of the powers of the Registrar of Patents under the Patents Act 57 of 1978 (the Act).

Powers of the Registrar of Patents

The case established that the Registrar of Patents has limited powers to refuse to accept patent applications. The Registrar can only refuse to accept a patent application if it does not comply with the requirements of the Act.

Payment of renewal fees

The case established that the non-payment of renewal fees is not a ground for refusing to accept a patent application. The Act provides that patent applications can be lapsed if the renewal fees are not paid, but it does not authorize the Registrar to refuse to accept patent applications on the grounds that the renewal fees have not been paid.

Impact of the Case

The case of University of Pretoria v Registrar of Patents 2011 BIP 41 (CP) has had a significant impact on the law of patents in South Africa. The case has established the limits of the Registrar of Patents' power to refuse to accept patent applications. The case has also established that the non-payment of renewal fees is not a ground for refusing to accept a patent application.

Ensign-Bickford (South Africa) (Pty) Ltd and Others v AECI Explosives & Chemicals Ltd 1998 BIP 271 (SCA)

Ensign-Bickford (South Africa) (Pty) Ltd and Others v AECI Explosives & Chemicals Ltd 1998 BIP 271 (SCA)

Facts

Ensign-Bickford (South Africa) (Pty) Ltd and others (the appellants) were the defendants in two infringement actions brought by AECI Explosives & Chemicals Ltd (the respondent). The respondent alleged that the appellants had infringed its patent for a plastic tube coated with explosive powder on the inner surface.

The appellants raised three grounds of invalidity: novelty, obviousness, and ambiguity. The appellants also argued that their use of the respondent's invention was protected by freedom of expression.

Issues

The main issues in the case were:

• Whether the respondent's patent was valid;
• Whether the appellants had infringed the respondent's patent; and
• Whether the appellants' use of the respondent's invention was protected by freedom of expression.

Reasons

The Supreme Court of Appeal (SCA) held that:

• The respondent's patent was valid;
• The appellants had infringed the respondent's patent; and
• The appellants' use of the respondent's invention was not protected by freedom of expression.

Validity of the patent

The SCA found that the respondent's patent was new, inventive, and not ambiguous. The SCA also found that the respondent had met the requirements for a valid patent under the Patents Act 57 of 1978 (the Act).

Infringement of the patent

The SCA found that the appellants had infringed the respondent's patent by manufacturing and selling plastic tubes coated with explosive powder on the inner surface. The SCA found that the appellants' product was substantially identical to the patented product.

Freedom of expression

The SCA held that the appellants' use of the respondent's invention was not protected by freedom of expression. The SCA found that the appellants' use of the invention was commercial in nature and that it was likely to damage the respondent's reputation.

Conclusion

The SCA granted an injunction restraining the appellants from infringing the respondent's patent.

Summary

The case of Ensign-Bickford (South Africa) (Pty) Ltd and Others v AECI Explosives & Chemicals Ltd 1998 BIP 271 (SCA) is a landmark case in South African law. The case is particularly important for its analysis of the following issues:

• The validity of patents;
• The infringement of patents; and
• The relationship between freedom of expression and patent law.

Validity of patents

The case established that a patent is valid if it is new, inventive, and not ambiguous. The case also established that the patentee must meet the requirements for a valid patent under the Act.

Infringement of patents

The case established that patent infringement occurs when a party manufactures, sells, or uses a product that is substantially identical to the patented product. The case also established that the infringer does not need to have intended to infringe the patent.

Relationship between freedom of expression and patent law

The case established that freedom of expression does not protect the use of a patented invention if the use is commercial in nature and is likely to damage the patentee's reputation.

Impact of the Case

The case of Ensign-Bickford (South Africa) (Pty) Ltd and Others v AECI Explosives & Chemicals Ltd 1998 BIP 271 (SCA) has had a significant impact on the law of patents and freedom of expression in South Africa. The case has established the principles that apply to the validity and infringement of patents, as well as the relationship between freedom of expression and patent law.

Payen Components SA Ltd v Bovic Gaskets CC and Others 1995 (4) SA 441 (A) 29

Payen Components SA Ltd v Bovic Gaskets CC and Others 1995 (4) SA 441 (A) 29

Facts

Payen Components SA Ltd (Payen) was a South African company that manufactured and sold gaskets. Bovic Gaskets CC (Bovic) was a South African company that also manufactured and sold gaskets.

Payen had developed a number of unique gasket identification codes, which were used to identify different types of gaskets. Bovic began using Payen's gasket identification codes in its own price lists and catalogues.

Payen sued Bovic for passing off. Payen claimed that Bovic's use of its gasket identification codes was likely to deceive or confuse consumers into thinking that Bovic's gaskets were associated with Payen.

Issues

The main issue in the case was whether Bovic's use of Payen's gasket identification codes was a passing off.

Reasons

The Supreme Court of Appeal held that Bovic's use of Payen's gasket identification codes was a passing off. The court found that the gasket identification codes were distinctive and that Bovic's use of the codes was likely to create the impression in the minds of consumers that Bovic's gaskets were associated with Payen.

Passing off

The court held that the following elements of passing off were present in the case:

• Goodwill: Payen had goodwill in its gasket identification codes.
• Misrepresentation: Bovic's use of Payen's gasket identification codes was likely to misrepresent to consumers that Bovic's gaskets were associated with Payen.
• Damage: Payen was likely to suffer damage as a result of Bovic's misrepresentation.

Conclusion

The court granted an interdict restraining Bovic from using Payen's gasket identification codes.

Summary

The case of Payen Components SA Ltd v Bovic Gaskets CC and Others 1995 (4) SA 441 (A) 29 is a landmark case in South African law. The case is particularly important for its analysis of the following issues:

• The law of passing off;
• The concept of goodwill;
• The elements of passing off; and
• The application of the law of passing off to product identification codes.

Law of passing off

The case established that the law of passing off protects the goodwill of businesses by preventing businesses from misrepresenting their goods or services as being those of another business.

Concept of goodwill

The case established that goodwill is the reputation and standing of a business in the minds of consumers. Goodwill can be attached to a business's name, trade marks, product identification codes, and other business assets.

Elements of passing off

The case established that the following elements must be present in order for a passing off claim to succeed:

• The plaintiff must have goodwill in a particular business asset, such as a trade mark, product identification code, or get-up.
• The defendant must misrepresent its goods or services as being those of the plaintiff.
• The plaintiff must be likely to suffer damage as a result of the defendant's misrepresentation.

Application of the law of passing off to product identification codes

The case established that the law of passing off can be applied to product identification codes. The case also established that the courts will consider a number of factors in determining whether the use of a product identification code is a passing off, including the distinctiveness of the code, the extent to which the code is used by the plaintiff and other businesses, and the likelihood of confusion among consumers.

Atlas Organic Fertilizers (Pty) Ltd and Others v Pikkewyn Ghwano (Pty) Ltd and Others 1981 (2) SA 173 (T)

Atlas Organic Fertilizers (Pty) Ltd and Others v Pikkewyn Ghwano (Pty) Ltd and Others 1981 (2) SA 173 (T)

Facts

Atlas Organic Fertilizers (Pty) Ltd (Atlas) was a South African company that manufactured and sold organic fertilizers. Pikkewyn Ghwano (Pty) Ltd (Pikkewyn) was a South African company that also manufactured and sold organic fertilizers.

In 1978, Pikkewyn was formed by a group of former employees of Atlas. The new company used a number of trade secrets that it had acquired from Atlas, including the formula for Atlas's best-selling fertilizer.

Atlas sued Pikkewyn for breach of confidence and restraint of trade. Atlas claimed that Pikkewyn had breached its confidence by using its trade secrets and that it had restrained trade by competing with Atlas.

Issues

The main issues in the case were:

• Whether Pikkewyn had breached its confidence by using Atlas's trade secrets; and
• Whether Pikkewyn had restrained trade by competing with Atlas.

Reasons

The Transvaal Supreme Court held that:

• Pikkewyn had breached its confidence by using Atlas's trade secrets; and
• Pikkewyn had restrained trade by competing with Atlas.

Breach of confidence

The court held that Pikkewyn had breached its confidence by using Atlas's trade secrets. The court found that the information in question was confidential and that Pikkewyn had obtained it by virtue of its relationship with Atlas. The court also found that Pikkewyn had used the information without Atlas's consent.

Restraint of trade

The court held that Pikkewyn had restrained trade by competing with Atlas. The court found that Pikkewyn's use of Atlas's trade secrets gave it an unfair advantage over Atlas. The court also found that Pikkewyn's competition with Atlas was likely to harm Atlas's business.

Conclusion

The court granted an interdict restraining Pikkewyn from using Atlas's trade secrets and from competing with Atlas in the sale of organic fertilizers.

Summary

The case of Atlas Organic Fertilizers (Pty) Ltd and Others v Pikkewyn Ghwano (Pty) Ltd and Others 1981 (2) SA 173 (T) is a landmark case in South African law. The case is particularly important for its analysis of the following issues:

• The law of breach of confidence;
• The law of restraint of trade; and
• The application of the law of breach of confidence and restraint of trade to trade secrets.

Law of breach of confidence

The case established that the law of breach of confidence protects confidential information that has been obtained by virtue of a relationship of trust and confidence. The case also established that the law of breach of confidence protects trade secrets.

Law of restraint of trade

The case established that the law of restraint of trade prohibits unreasonable restraints on trade. The case also established that the use of trade secrets to compete with a former employer can be an unreasonable restraint on trade.

Application of the law of breach of confidence and restraint of trade to trade secrets

The case established that the law of breach of confidence and restraint of trade can be applied to trade secrets. The case also established that the courts will weigh a number of factors in determining whether the use of a trade secret is a breach of confidence or an unreasonable restraint on trade, including the nature of the information, the relationship between the parties, and the impact on the former employer's business.

Impact of the Case

The case of Atlas Organic Fertilizers (Pty) Ltd and Others v Pikkewyn Ghwano (Pty) Ltd and Others 1981 (2) SA 173 (T) has had a significant impact on the law of breach of confidence and restraint of trade in South Africa. The case has established that trade secrets are protected by the law of breach of confidence and restraint of trade. The case has also established the factors that the courts will consider in determining whether the use of a trade secret is a breach of confidence or an unreasonable restraint on trade.

McDonalds Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another 1997 (1) SA 1 (A)

 McDonalds Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another 1997 (1) SA 1 (A)

Facts

McDonald's Corporation (McDonald's) is a multinational fast food corporation that operates restaurants all over the world. McDonald's owns a number of registered trade marks, including the "Golden Arches" and the "Big Mac".

Joburgers Drive-Inn Restaurant (Pty) Ltd (Joburgers) is a South African fast food restaurant chain. Joburgers opened a number of restaurants in South Africa using the trade marks "Golden Arches" and "Big Mac".

McDonald's sued Joburgers for trade mark infringement and passing off. McDonald's claimed that Joburgers' use of the trade marks "Golden Arches" and "Big Mac" was likely to deceive or cause confusion among consumers.

Issues

The main issues in the case were:

• Whether Joburgers' use of the trade marks "Golden Arches" and "Big Mac" infringed McDonald's trade mark rights; and
• Whether Joburgers' use of the trade marks "Golden Arches" and "Big Mac" was a passing off.

Reasons

The Appellate Division held that:

• Joburgers' use of the trade marks "Golden Arches" and "Big Mac" infringed McDonald's trade mark rights; and
• Joburgers' use of the trade marks "Golden Arches" and "Big Mac" was a passing off.

Trade mark infringement

The Appellate Division held that Joburgers' use of the trade marks "Golden Arches" and "Big Mac" was likely to deceive or cause confusion among consumers. The court found that the two trade marks were similar enough to be likely to cause confusion, and that the goods in relation to which the trade marks were used were similar (hamburgers and other fast food).

Passing off

The Appellate Division held that Joburgers' use of the trade marks "Golden Arches" and "Big Mac" was a passing off. The court found that the overall impression created by Joburgers' use of the trade marks was that its restaurants were associated with McDonald's.

Conclusion

The Appellate Division granted an interdict restraining Joburgers from using the trade marks "Golden Arches" and "Big Mac".

Summary

The case of McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another 1997 (1) SA 1 (A) is a landmark case in South African 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 South African trade mark law to foreign trade marks.

Test for trade mark infringement

The Appellate Division in this case held that the test for trade mark infringement is whether the defendant's use of the trade mark is likely to deceive or cause confusion among consumers. The court found that this test is in line with the test for trade mark infringement in other common law countries.

Test for passing off

The Appellate Division in this case held that the test for passing off is whether the defendant's use of the trade mark is likely to create the impression in the minds of consumers that the defendant's goods or services are associated with the plaintiff's goods or services. The court found that this test is in line with the test for passing off in other common law countries.

Application of South African trade mark law to foreign trade marks

The Appellate Division in this case held that South African trade mark law applies to foreign trade marks. The court found that this is necessary in order to protect the goodwill of foreign trade mark owners in South Africa.

Impact of the Case

The case of McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another 1997 (1) SA 1 (A) has had a significant impact on the law of trade marks in South Africa. The case has established that the tests for trade mark infringement and passing off are the same as the tests in other common law countries. The case has also established that South African trade mark law applies to foreign trade marks.

Société des Produits Nestlé SA v International Foodstuffs Co 2013 JDR 2699 (GNP)

Société des Produits Nestlé SA v International Foodstuffs Co 2013 JDR 2699 (GNP)

Facts

Société des Produits Nestlé SA (Nestlé) is the owner of the registered trademark "MAGGI" for a variety of food products, including noodles. International Foodstuffs Co (IFC) is a South African company that sells a variety of food products, including noodles. IFC sold noodles under the trademark "MAGGI PLUS".

Nestlé sued IFC for trade mark infringement. Nestlé claimed that IFC's use of the trademark "MAGGI PLUS" infringed its registered trademark "MAGGI".

Issues

The main issue in the case was whether IFC's use of the trademark "MAGGI PLUS" infringed Nestlé's registered trademark "MAGGI".

Reasons

The Gauteng North High Court (GNP) held that IFC's use of the trademark "MAGGI PLUS" infringed Nestlé's registered trademark "MAGGI". The court reasoned that the two trademarks were similar enough to be likely to cause confusion among consumers.

Similarity of the trademarks

The GNP explained that the test for trade mark infringement is whether the two trademarks are similar enough to be likely to cause confusion among consumers. The court found that the trademarks "MAGGI" and "MAGGI PLUS" were similar enough to be likely to cause confusion among consumers because they were both pronounceable in the same way and they both began with the word "MAGGI".

Likelihood of confusion

The GNP also explained that the court must consider a number of factors in determining whether there is a likelihood of confusion among consumers. These factors include:

• The degree of similarity between the two trademarks;
• The nature of the goods or services in relation to which the trademarks are used; and
• The knowledge of the average consumer.

The GNP found that there was a likelihood of confusion among consumers in this case because the two trademarks were similar and the goods in relation to which the trademarks were used were the same (noodles). The court also found that the average consumer would be likely to be confused by the two trademarks because they were both pronounceable in the same way and they both began with the word "MAGGI".

Conclusion

The GNP granted Nestlé an interdict interdicting and restraining IFC from using the trademark "MAGGI PLUS". The court also ordered IFC to pay Nestlé's costs.

500-Word Summary

The case of Société des Produits Nestlé SA v International Foodstuffs Co 2013 JDR 2699 (GNP) is an important 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; and
• The factors that the court will consider in determining whether there is a likelihood of confusion among consumers.

The GNP's decision that IFC's use of the trademark "MAGGI PLUS" infringed Nestlé's registered trademark "MAGGI" is significant. The decision means that businesses cannot use trademarks that are similar to the well-known trademarks of other businesses without their permission.

The GNP's decision to consider the knowledge of the average consumer in determining whether there is a likelihood of confusion among consumers is also significant. The decision means that businesses need to be aware of the knowledge of the average consumer when choosing trademarks for their products.

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.

Verimark (Pty) Ltd v BMW AG 2007 (6) SA 263 (SCA)

Verimark (Pty) Ltd v BMW AG 2007 (6) SA 263 (SCA)

Facts

Verimark (Pty) Ltd (Verimark) was a South African retailer that sold car care products. Verimark produced a television advertisement for its car care products in which it used a depiction of a BMW vehicle. The advertisement showed the BMW vehicle being set on fire, but the Verimark products were able to prevent the fire from damaging the vehicle.

BMW AG (BMW) was the German manufacturer of BMW vehicles. BMW sued Verimark for trade mark infringement. BMW claimed that Verimark's use of the BMW trade mark in the advertisement was unauthorized and that it was likely to cause confusion among consumers.

Issues

The main issue in the case was whether Verimark's use of the BMW trade mark in the advertisement constituted trade mark infringement.

Reasons

The Supreme Court of Appeal (SCA) held that Verimark's use of the BMW trade mark in the advertisement did not constitute trade mark infringement. The court reasoned that Verimark's use of the BMW trade mark was bona fide and that it was unlikely to cause confusion among consumers.

Bona fide use

The SCA explained that bona fide use of a trade mark is a defense to trade mark infringement. The court found that Verimark's use of the BMW trade mark in the advertisement was bona fide because Verimark was using the trade mark to indicate that its products were compatible with BMW vehicles.

Likelihood of confusion

The SCA also explained that trade mark infringement occurs when the use of a trade mark is likely to cause confusion among consumers. The court found that it was unlikely that Verimark's use of the BMW trade mark in the advertisement would cause confusion among consumers because the advertisement clearly showed that the BMW vehicle was not being damaged by the Verimark products.

Conclusion

The SCA dismissed BMW's appeal and ordered BMW to pay Verimark's costs.

Summary

The case of Verimark (Pty) Ltd v BMW AG (2007 (6) SA 263 (SCA)) is a landmark case in South African trade mark law. The case is particularly important for its analysis of the following issues:

• The concept of bona fide use of a trade mark; and
• The concept of likelihood of confusion in trade mark infringement cases.

The SCA's decision that Verimark's use of the BMW trade mark in the advertisement was bona fide is significant. The decision means that businesses can use the trade marks of other businesses in their advertising if they are doing so to indicate that their products are compatible with the products of the other business.

The SCA's decision that it was unlikely that Verimark's use of the BMW trade mark in the advertisement would cause confusion among consumers is also significant. The decision means that businesses have greater freedom to use the trade marks of other businesses in their advertising, provided that they do not create a risk of confusion among consumers.

Beecham Group plc and Others v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA)

Beecham Group plc and Others v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA)

Facts

Beecham Group plc and Others (Beecham) were the owners of a registered trade mark for the shape of the antibiotic tablet Augmentin. Triomed (Pty) Ltd (Triomed) imported and sold a generic antibiotic tablet with the same shape as Augmentin. Beecham sued Triomed for trade mark infringement.

Issues

The main issue in the case was whether the shape of a tablet could be a valid trade mark.

Reasons

The Supreme Court of Appeal (SCA) held that the shape of a tablet could not be a valid trade mark. The court reasoned that the shape of a tablet was a functional feature of the tablet and that functional features cannot be trade marks.

Functional features

The SCA explained that a functional feature is a feature of a product that is necessary to the use of the product or that gives the product a technical advantage. The court found that the shape of the Augmentin tablet was a functional feature because it was necessary to the use of the tablet and because it gave the tablet a technical advantage in terms of manufacturing and packaging.

Trade marks

The SCA also explained that a trade mark is a sign that distinguishes the goods or services of one person from the goods or services of other persons. The court found that the shape of the Augmentin tablet could not distinguish Beecham's tablets from the tablets of other manufacturers because any manufacturer could produce tablets with the same shape.

Conclusion

The SCA dismissed Beecham's appeal and ordered Beecham to pay Triomed's costs.

Summary

The case of Beecham Group plc and Others v Triomed (Pty) Ltd (2003 (3) SA 639 (SCA)) is a landmark case in South African trade mark law. The case is particularly important for its analysis of the following issues:

• The concept of a functional feature;
• The concept of a trade mark; and
• The relationship between functional features and trade marks.

The SCA's decision that the shape of a tablet could not be a valid trade mark is significant. The decision means that businesses cannot obtain trade marks for functional features of their products. The decision also means that consumers cannot rely on the shape of a product to identify the source of the product.