THE Supreme Court of Appeal has interdicted and restrained Pepkor Group from infringing on the trademarks of global sportswear manufacturer Adidas by selling four types of shoes featuring four stripes.
The court also interdicted Pepkor from passing off its footwear as that of Adidas, and directed that an inquiry be held to determine the amount of damages to be awarded to Adidas.
The judgment, passed on Thursday, made it clear that the rights acquired by Adidas were infringed by the unauthorised use of a mark that so nearly resembled the registered mark that it was likely to deceive or cause confusion.
The court also ordered Pepkor to remove the infringing marks from its footwear, and, where this was not possible, to deliver the footwear to Adidas.
It was not immediately clear how the order would affect Pepkor, trading as Pep Stores and Ackermans. Pepkor said on Monday that it was disappointed with the outcome, but respected the judgment. Efforts to obtain comment from Adidas failed.
Senior associate at Edward Nathan Sonnenberg’s intellectual property department Rachel Sikwane said Adidas only needed to show that there was a likelihood of confusion. "The test for the likelihood of confusion (or deception) is an objective one," she said.
In about October 2007, Adidas discovered that Ackermans and Pep Stores had been selling trainers and soccer boots featuring two and four parallel stripes.
Adidas brought its appeal last year after the Cape high court said in December 2011 that Pepkor was not infringing the trademarks and dismissed the application.
Pepkor had argued that the stripes on its shoes were not used as trademarks but embellishments, and that the protection afforded to Adidas was limited to three parallel stripes.
Supreme Court of Appeal acting Judge Brian Southwood said the fact that Adidas’s trademarks were famous did not justify a finding that there was no likelihood of deception or confusion.
"The more distinctive the trademark is, or the greater its reputation, the greater the likelihood that there will be deception or confusion where a similar mark is used on competing products."
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