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[2019] ZAKZPHC 16
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Bata Brands SARL and Others v Novita Shoes CC and Another (3649/2010) [2019] ZAKZPHC 16; 2019 BIP 111 (KZP) (18 March 2019)

IN
THE HIGH COURT OF SOUTH AFRICA
KWAZULU-NATAL
DIVISION, PIETERMARITZBURG
Not
Reportable
Case
No: 3649/2010
In the matter between:
BATA BRANDS SARL

1
st
Applicant
FUTURA FOOTWEAR
LTD

2
nd
Applicant
BATA BRANDS
SA

3
rd
Applicant
BATA SOUTH AFRICA (PTY)
LTD

4
th
Applicant
and
NOVITA SHOES CC

1
st
Respondent
EUGASEN
REDDY

2
nd
Respondent
ORDER
1.
It is declared that, in terms of s 34(1)
(a)
of the Trade Marks
Act 194 of 1993 (the Act), the first respondent and the second
respondent (the respondents) have infringed the
trade mark
registration numbers 2003/16461 and 2003/16462, as depicted in
annexures ‘A1’ and ‘A2’ hereto.
2.
The respondents are interdicted and restrained from infringing trade
mark registration numbers
2003/16461 and 2003/16462 by using, in the
course of trade or otherwise, in relation to any footwear product,
the offending shoe
sole pattern, as depicted in annexure ‘B’
hereto (the infringing trade mark), or any trade mark similar
thereto.
3.
The respondents are directed:
3.1     to destroy all material
bearing the infringing trade mark and to remove the infringing trade
mark from
all footwear within 20 days of service of this order on
them; and
3.2     where the infringing trade
mark is inseparable or incapable of being removed from any such
goods, to
deliver up for destruction all such goods and material to
the applicants’ attorneys within 20 days of service of this
order
on them.
4.
It is directed that an enquiry be held for the purposes of
determining the amount of damages
(in terms of s 34(3)
(c)
of the Act) or reasonable royalty in lieu of damages (in terms of
s 34(3)
(d)
of the Act) to be awarded to the applicants
and, for purposes of such enquiry, the applicants shall deliver a
declaration within
20 days of the grant of this order, after which
the Uniform Rules of Court shall apply.
5.
The first and second respondents are ordered to pay the costs of this
application jointly
and severally, the one paying the other to be
absolved, including the costs of two counsel where two counsel were
used and including
all costs relating to the following:
5.1     The application,
adjournments and ultimate withdrawal in respect of the referral of
the matter to oral
evidence for the purposes of determining whether
the ‘shape, configuration or pattern, registered as trade marks
under numbers
2003/16461 and 2003/16462 are utilitarian within the
meaning of s 34(2)
(e)
of the Act’, including the
proceedings related to the court orders dated 21 August 2013 and
16 May 2016; and
5.2     The qualifying costs
occasioned by the applicants’ two expert witnesses, Professor
Cornelius Scheffer
and Dr Christopher Leonard Vaughan.
Annexure
‘A1’
2003/16461
Annexure
‘A2’
2003/16462
Annexure
‘B’
JUDGMENT
Delivered
on: 18 March 2019
Gorven J
[1]
This application concerns designs on the soles of
shoes. The applicants allege an infringement by the respondents of
two registered
trade marks. They also allege passing off of the
respondents’ footwear as being that of the applicants. The
application seeks
to interdict the continuation of this conduct. A
further order is sought that the respondents remove the alleged
offending mark
from their products or, if this cannot be done, that
the products be delivered up for destruction. Finally, an order is
sought
directing that an enquiry be held to determine the damages or
reasonable royalties to be awarded to the applicants resulting from

the respondents’ conduct.
[2]
When the application was launched, the first
applicant was the proprietor of trade mark registration numbers
2003/16461 and 2003/16462,
both of Toughees sole patterns in class 25
(the marks). The marks were registered under the
Trade Marks Act (the
Act).
[1]
They were assigned by
the first applicant to the third applicant on 24 April 2015.
Until 12 January 2016, the second
applicant was ‘licensed,
authorised and otherwise permitted’ by the first applicant to
use the marks. On 12 January
2016, the second applicant ceded all of
its assets and liabilities to the fourth applicant.
[2]
Only the first and second applicants launched the application. By
consent, an order of this court on 7 August 2018 joined
the
third and fourth applicants. In this judgment, I shall not
distinguish between the various applicants unless necessary.
[3]
The marks relate to the male and female shoes
known as Bata Toughees. They are represented below:
2003/16461
2003/16462
[4]
It is common ground that the respondents trade in
a shoe with the sole design depicted below:
[5]
The applicants became aware of the alleged
infringement and passing off during 2007. Certain approaches were
made to the respondents
but these came to nought. The application was
then launched in 2010. In their heads of argument, and initially
during argument,
the respondents submitted that the applicants unduly
delayed between 2010 and 2014. This, it was said, should result in
the exercise
of my discretion against affording them relief. The
submission was based on the following
dictum
of Harms DP in
Turbek Trading CC v
A and D Spitz Ltd & another
:
[3]
‘Delay,
in the context of trade mark law, may provide evidence of a loss of
goodwill or distinctiveness but that was not Turbek’s
case on
the papers. All this does not mean that delay may not have procedural
consequences; for instance, it may be a factor to
take into account
in exercising a court’s discretion to refuse to issue a
declaration of rights or an interim interdict or,
maybe, even a final
interdict, leaving the claimant to pursue other remedies such as
damages.’
However,
during later argument, the respondents no longer pressed for this
outcome. In my view, the circumstances were, in any event,
not such
that any procedural consequence contemplated in
Turbek Trading
would have been triggered.
[6]
There were initially a number of substantive
defences raised. The only ones which remained at the time of argument
were:
a)
Which of the applicants, if any, having regard to the various
assignments that occurred,
are entitled to seek the relief in
question?
b)
Whether the sole pattern of the respondents’ shoes infringes
the marks.
c)
Whether the sole pattern of the respondents’ shoes constitutes
passing off.
During
argument, the applicants abandoned the relief based on passing off.
This involved the second and fourth applicants. For the
remaining
issues, therefore, only the first and third applicants seek relief.
[7]
As regards the first remaining defence, the
respondents accepted that the third applicant is at present the
proprietor of the marks
and is thus entitled to enforce them by way
of an interdict if the respondents have been infringing them. They
also accepted in
argument that the issue as to the respective rights
to the marks at any one time only arises in the claim for damages or
royalties.
This can be dealt with in any enquiry into whether either
or both the first and third applicants are entitled to damages or
royalties
and, if so, for what period. This then leaves for
determination the question of an infringement of the marks.
[8]
Section 34(1)
(a)
of the Act provides:
‘The
rights acquired by registration of a trade mark shall be infringed
by-
(a)
the unauthorized 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 . . .’.
The
applicants correctly submitted that, in order to succeed, they were
obliged to show:
a)
use by the respondents of the registered mark or of a mark so nearly
resembling it as to
be likely to deceive or cause confusion;
b)
that the use is in relation to the goods or services in respect of
which the mark is registered;
c)
that there is use in the course of trade;
d)
that the use is unauthorised; and
e)
that the use in question is ‘trade mark use’.
[9]
Of these, the middle three issues are not
disputed. As to the first issue, the applicants conceded that the
sole pattern on the
respondents’ shoes is not identical to the
marks. An infringement would require that sole pattern to be ‘so
nearly
resembling’ that of the marks ‘as to be likely to
deceive or cause confusion’.
[4]
The requirements for proving this are well-known. In
Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd
,
[5]
Corbett JA said:
‘In
an infringement action the
onus
is on the plaintiff to show
the probability or likelihood of deception or confusion. It is not
incumbent upon the plaintiff to
show that every person interested or
concerned (usually as customer) in the class of goods for which his
trade mark has been registered
would probably be deceived or
confused. It is sufficient if the probabilities establish that a
substantial number of such persons
will be deceived or confused. The
concept of deception or confusion is not limited to inducing in the
minds of interested persons
the erroneous belief or impression that
the goods in relation to which the defendant's mark is used are the
goods of the proprietor
of the registered mark, ie the plaintiff, or
that there is a material connection between the defendant's goods and
the proprietor
of the registered mark; it is enough for the plaintiff
to show that a substantial number of persons will probably be
confused as
to the origin of the goods or the existence or
non-existence of such a connection.’
[10]
The test is similar to that where registration of
a mark is opposed on the basis that it is similar to one already
registered and
is said to be:
[6]
‘The
ultimate test is, after all, as I have already indicated, whether on
a comparison of the two marks it can properly
be said that there
is a reasonable likelihood of confusion if both are to be used
together in a normal and fair manner, in the
ordinary course of
business.’
[7]
The
question then to be answered is:
‘Can
it be said that, having regard to the sameness of the two marks, the
similarity between the goods in respect of which
the appellants' mark
is registered (wine) and the goods in which respondent trades (wine
grapes) is such that confusion or deception
is the probable
result?’
[8]
[11]
This involves a value judgment
[9]
taking into account various factors. Brand JA, in
Roodezandt
Ko-Operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd &
another
,
[10]
said of undertaking that task:
‘What
we have now to do is, therefore, to transport ourselves, notionally,
from the court-room or the study, to the market
place. We must try to
look at the marks as they will be seen, if they are both in fair and
normal commercial use, by the hypothetical
consumers of [wine]. Those
will be people of many races and degrees of education, having varied
gifts, interests and talents. We
are not to postulate the consumer of
“phenomenal ignorance or extraordinarily defective
intelligence”. . .  We
are to consider a person of average
intelligence and proper eyesight, buying with ordinary caution.’
[11]
He
went on to summarise the accepted principles to be applied in
arriving at the value judgment:
‘(a)
A likelihood of confusion does not only arise when every person
interested or concerned in the class of goods for which
the trademark
has been registered could probably be deceived or confused. It also
arises if the probabilities establish that a
substantial number of
such persons will be deceived or confused.
(b) The
concept of deception or confusion is not limited to inducing in the
minds of these interested persons the erroneous belief
or impression
that the two competing products are those of the objector or that
there is a connection between these two products.
A likelihood of
confusion is also established when it is shown that a substantial
number of persons will probably be confused as
to the origin of the
products or the existence or non-existence of such a connection.
(c) The
determination of the likelihood of confusion involves a comparison
between the two competing marks, having regard to the
similarities
and differences in the two and an assessment of the impact it would
have on the average type of customer who is likely
to purchase the
kind of goods to which the marks are applied.
(d) The
marks must not only be considered side by side, but also separately.
(e) It
must be borne in mind that the ordinary purchaser may encounter goods
bearing one mark with an imperfect recollection of
the other.
(f) If
each of the competing marks contains a main or dominant feature or
idea, the likely impact made by this dominating feature
on the mind
of the customer must be taken into account. This is so because marks
are remembered by some significant or striking
feature rather than by
the photographic recollection of the whole.’
[12]
[12]
It must thus be shown by the applicants that a
significant number of people are likely to be confused as to whether
the impugned
soles are associated with the marks. As can be seen,
this is not a matter of mechanical calculation. It also does not
involve meticulous
scrutiny conducted in a rarefied atmosphere
removed from the hurly burly of commercial life. Rather, it involves
an assessment
of the dominant impression likely to be gained by the
people who will come across the goods in the marketplace. It is in
that context
that people might become confused, either by ‘general
impressions or by some significant or striking feature’.
[13]
[13]
The respondents relied in opposition on a
detailed, minute analysis aimed at distinguishing their soles from
the marks. Their heads
of argument, in which the respondents’
shoe is referred to as a ‘Jet’ shoe, included submissions
that:
‘(i)
the indent on the Jet sole is of a heavier grain;
(ii)
the lines on the Jet sole are not stepped as they are on the Toughees
sole;
(iii)
the line configuration on the Jet sole is 2-5-2 as opposed to 2-3-3
on the Toughees sole;
(iv)
the Jet branding is big and bold;
(v)
the Jet shoe includes a size indicator;
(vi)
the lines on the Jet shoe run in the opposite direction to those on
the Toughees sole;
(vii)
the tread on the Jet sole is wider and the sole is much thicker than
the Toughees sole;
(viii)
the Jet reinforcement is shorter than that of the Toughees sole . .
.’.
The
applicants submitted that these issues address only the passing off
aspect of the application and did not at all impact on the

infringement aspect. This is correct in the light of the approach
referred to above.
[14]
The analysis undertaken by the respondents
certainly does not take into account context and the likelihood of
consumers being struck
by a dominant general impression. The grouping
in the front section of the soles of three sets of lines, with more
lines in the
middle than in the front and at the rear is strikingly
similar. This is also so of the two groupings at the rear of the
sole. There
is little likelihood of a consumer having a photographic
recollection of the specific number of lines in the wavy sections or
of
any of the other differences. It is clear that the overall
impression which would be gained in the relevant context is of a
series
of similar wavy lines on the soles. This was borne out by a
survey conducted by the applicants. This showed that, confronted by

the sole of the respondents and the marks, a substantial number of
people confused their origin. Although it is for the court to

determine the issue, properly conducted surveys are admissible as
evidence of actual confusion or deception. ‘The evidence
of the
surveys is not conclusive but simply of relevance in determining this
issue.’
[14]
In order to
assist, ‘the questions should be fair and should be so
formulated that they preclude a weighted or conditioned

response.’
[15]
The only criticism of the survey levelled by the respondents is that
it removed the name from the representation of the soles of
the
respondents’ shoes. But it was appropriate to do so since the
name does not form part of the marks.
[15]
In my value judgment, the soles of the
respondents’ shoes are likely to be confused with the marks by
a significant number
of people viewing them in commercial outlets.
The present matter is even more likely to cause deception or
confusion than was the
case in
Adidas
Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty)
Ltd
,
[16]
where a series of four stripes was held to be likely to lead to
deception or confusion even though the registered mark was well-known

to have only three. In my view, the applicants have established the
likelihood that a substantial number of people will be deceived
or
confused into believing that the respondents’ soles are
associated with the marks. In fact, during argument, the submissions

concerning deception or confusion were all but abandoned by the
respondents.
[16]
The respondents then confined their opposition to
a submission that they were not using their soles as trade marks.
They accepted
that they stood or fell by this submission. They relied
on the matter of
Verimark (Pty) Ltd v BMW AG;
BMW AG v Verimark (Pty) Ltd
,
[17]
where Harms ADP distinguished between the protection accorded to
trade marks which were badges of origin and copyright law, saying:
‘It
is trite that a trade mark serves as a badge of origin and that trade
mark law does not give copyright-like protection. Section

34(1)
(a)
, which deals with primary infringement and gives in a
sense absolute protection, can, therefore, not be interpreted to give
greater
protection than that which is necessary for attaining the
purpose of a trade mark registration, namely protecting the mark as a

badge of origin.’
[18]
[17]
But
Verimark
is distinguishable. It concerned the promotion of a brand of vehicle
polish called Diamond Guard, not comparable goods to those
of BMW as
is the case in the present matter. In addition, the
dictum
must be seen in context. Of the complaint that the BMW logo shown in
promotional material was being used in infringement of the
BMW mark,
Harms ADP found:
‘It is use of the car to illustrate Diamond Guard's properties
rather than use of the trade mark. No one, in my judgment,
would
perceive that there exists a material link between BMW and Diamond
Guard or that the logo on the car performs any guarantee
of
origin function in relation to Diamond Guard.’
[19]
He
set out the test for use as a mark and concomitant infringement:
‘What
is, accordingly, required is an interpretation of the mark through
the eyes of the consumer as used by the alleged infringer.
If the use
creates an impression of a material link between the product and
the owner of the mark there is infringement; otherwise
there is not.
The use of a mark for purely descriptive purposes will not create
that impression but it is also clear that this
is not necessarily the
definitive test.’
[20]
The
present matter clearly does not involve the use of a mark for ‘purely
descriptive purposes’.
[18]
This approach has recently been followed and
elaborated on by Wallis JA in
Truworths Ltd v
Primark Holdings
,
[21]
as follows:
‘The
essence of a trademark is that it shows a connection in the course of
trade between the goods or services concerned and
the proprietor of
the mark. The purpose of protecting it is to preserve the value
of the mark to the proprietor and prevent
its appropriation by
another or its dilution. Actions that do neither of those things do
not amount to an infringement of the mark,
as illustrated by
the
Verimark
case, where the appearance of BMW's
logo on a car in an advertisement for car-care kits and car polish
was held not to constitute
infringement.’
In
the present matter, there is clearly a connection in the course of
trade between the respondents’ soles and the marks.
[19]
The respondents accepted that the marks fit the
definition of a ‘mark’ in the Act, which is:
‘[A]ny
sign capable of being represented graphically, including a device,
name, signature, word, letter, numeral, shape, configuration,

pattern, ornamentation, colour or container for goods or any
combination of the aforementioned.’. . .
[22]
This
is clearly correct since the marks involve a configuration, pattern
and ornamentation. The respondents also accepted that the
marks were
registrable in terms of s 9(1) of the Act:
‘In
order to be registrable, a trade mark shall be capable of
distinguishing the goods or services of a person in respect
of which
it is registered or proposed to be registered from the goods or
services of another person either generally or, where
the trade mark
is registered or proposed to be registered subject to limitations, in
relation to use within those limitations.’
This
section simply applies the definition of a trade mark in the Act as
one used or proposed to be used to distinguish the goods
in question
from the same kind of goods.
[23]
As was put in relation to the definition of trade mark in the earlier
Act:
‘[T]he
purposes of a trade mark are to indicate a connection in the course
of trade between the (in this case) goods, and
some person having the
right to use the mark; and to distinguish the goods in relation
to which the mark is used from the
same kind of goods connected in
the course of trade with any other person.’
[24]
There
is no counter-application to expunge the registration of the marks.
The issue is not, therefore, whether or not the applicants
are using,
and are entitled to use, the marks as trade marks, but focuses purely
on the use by the respondents.
[20]
The respondents claim in the papers that they
were not using the sole as a trade mark, saying:
‘These
soles are clearly vastly different from one another. In fact the only
similarity lies in the nature of the wavy sole
and even that is of a
completely different configuration and/or direction. Furthermore, as
pointed out in “ER 7” with
reference to the diagram
significant differences have intentionally been included so as to
prevent deception or confusion.’
This
evidence is entirely at odds with the submission that the sole of the
respondents does not constitute a mark and was not used
as such. The
respondents specifically acknowledge that their sole has a
configuration (albeit claiming a different one to that
of the marks).
This constitutes their sole as a mark. As regards use as a trade
mark, in
Adidas AG & another v Pepkor
Retail Ltd
,
[25]
it was held that:
‘[I]t
will be very difficult to persuade a court that any mark applied to
goods for “embellishment” or “decoration”

(which are both covered by the ordinary meaning of “ornamentation”)
is not applied for the purpose of distinguishing
the goods.’
[26]
I
am not even required to draw any such inference in the present
matter. This is because the respondents specifically acknowledge

having had reference to the applicants’ marks so as to
intentionally include ‘significant differences’. This
is
an express acknowledgement that the purpose of their design was to
distinguish their sole from the marks. This clearly amounts
to use of
their sole as a trade mark.
[21]
I have already held that the sole is likely to
create confusion or be deceiving. In the result, the applicants have
proved that
the respondents’ sole infringes the marks.
According to the Act, certain consequences flow from this finding.
First, in terms
of s 34(3)
(a)
of the Act, the third applicant as proprietor is entitled to
interdict such infringement. Secondly, in terms of s 34(3)
(b)
of the Act, the third applicant as proprietor is entitled to:
‘[A]n
order for removal of the infringing mark from all material and, where
the infringing mark is inseparable or incapable
of being removed from
the material, an order that all such material be delivered up to the
proprietor . . .’.
Thirdly, in terms of s 34(3)
(c)
and
s 34(3)
(d)
of the Act, the proprietor is entitled to
damages or, in lieu of damages:
‘[A]
reasonable royalty which would have been payable by a licensee for
the use of the trade mark concerned . . .’.
This
relief requires a separate enquiry.
[27]
Because the assignments transferred the ownership of the marks, the
order concerning damages or royalties should be framed in such
a way
that the applicants must deliver a declaration and show in the
enquiry which of them is entitled to damages or royalties
during
which period of infringement. Finally, so as to found this claim, the
applicants submitted that it would be appropriate
to issue a
declaration that the conduct of the respondents infringed the marks.
This seems appropriate in the circumstances and
I did not understand
the respondents to oppose such an order if the case for infringement
was made out.
[22]
The question of costs remains. Certain costs were
reserved along the way. These included costs incurred as a result of
the respondents’
defence of utility and their insistence that
that issue be referred for the hearing of oral evidence. This was
done as a result
and, when the matter had been set down for such
hearing, the respondents abandoned that defence. In the
circumstances, it is appropriate
that those reserved costs should be
paid by the respondents. As regards the application as a whole, the
costs must follow the result.
The applicants requested the costs of
two counsel. Although the respondents were represented by one counsel
only at the hearing,
this request was not opposed. The matter is one
of some complexity, it has travelled a long and hard fought road and,
in my view,
warrants such an order where two counsel were used.
Finally, the applicants made use of expert witnesses and those
qualifying costs
must be allowed.
[23]
In the result, the following order issues:
1.
It is declared that, in terms of s 34(1)
(a)
of the Trade Marks
Act 194 of 1993 (the Act), the first respondent and the second
respondent (the respondents) have infringed the
trade mark
registration numbers 2003/16461 and 2003/16462, as depicted in
annexures ‘A1’ and ‘A2’ hereto.
2.
The respondents are interdicted and restrained from infringing trade
mark registration numbers
2003/16461 and 2003/16462 by using, in the
course of trade or otherwise, in relation to any footwear product,
the offending shoe
sole pattern, as depicted in annexure ‘B’
hereto (the infringing trade mark), or any trade mark similar
thereto.
3.
The respondents are directed:
3.1     to destroy all material
bearing the infringing trade mark and to remove the infringing trade
mark from
all footwear within 20 days of service of this order on
them; and
3.2     where the infringing trade
mark is inseparable or incapable of being removed from any such
goods, to
deliver up for destruction all such goods and material to
the applicants’ attorneys within 20 days of service of this
order
on them.
4.
It is directed that an enquiry be held for the purposes of
determining the amount of damages
(in terms of s 34(3)
(c)
of the Act) or reasonable royalty in lieu of damages (in terms of
s 34(3)
(d)
of the Act) to be awarded to the applicants
and, for purposes of such enquiry, the applicants shall deliver a
declaration within
20 days of the grant of this order, after which
the Uniform Rules of Court shall apply.
5.
The first and second respondents are ordered to pay the costs of this
application jointly
and severally, the one paying the other to be
absolved, including the costs of two counsel where two counsel were
used and including
all costs relating to the following:
5.1     The application,
adjournments and ultimate withdrawal in respect of the referral of
the matter to oral
evidence for the purposes of determining whether
the ‘shape, configuration or pattern, registered as trade marks
under numbers
2003/16461 and 2003/16462 are utilitarian within the
meaning of s 34(2)
(e)
of the Act’, including the
proceedings related to the court orders dated 21 August 2013 and
16 May 2016; and
5.2     The qualifying costs
occasioned by the applicants’ two expert witnesses, Professor
Cornelius Scheffer
and Dr Christopher Leonard Vaughan.
Annexure
‘A1’
2003/16461
Annexure
‘A2’
2003/16462
Annexure
‘B’
Gorven J
Date
of Hearing:

8 March 2019
Date
of Judgment:
18
March 2019
Appearances
For
the Applicants:

R Michau SC
(with him H Worthington)
Instructed by DM Kisch Incorporated,
locally represented by Shepstone & Wylie Attorneys.
For the Respondents:
AJ Troskie
SC
Instructed by Geyser Du Toit Louw & Kitching,
locally represented by Venns Attorneys.
[1]
194 of 1993.
[2]
The fourth applicant had a different name at the time but has since
changed its name to the present one.
[3]
Turbek Trading CC v A and D Spitz Ltd & another
[2010] 2 All SA 284
(SCA) para 15.
[4]
Section 34(1)
(a)
.
[5]
Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984
(3) SA 623
(A) at 640G-I. This matter dealt with a comparable
section of an earlier Act, s 44(1)
(a)
of the Trade Marks
Act 62 of 1963 (the earlier Act).
[6]
Smithkline
Beecham Consumer Brands (Pty) Ltd (formerly known as Beecham SA
(Pty) Ltd) v Unilever plc
1995 (2) SA 903 (A).
[7]
Smithkline
at 912G-H.
[8]
Mettenheimer & another v Zonquasdrif Vineyards CC &
others
2014 (2) SA 204
(SCA) para 12.
[9]
Cowbell AG v ICS Holdings Ltd
2001 (3) SA 941
(SCA) para 10.
[10]
Roodezandt Ko-Operatiewe Wynmakery Ltd v Robertson Winery (Pty)
Ltd & another
[2014] ZASCA 173.
[11]
Roodezandt
para 5.
[12]
Roodezandt
para 6 (references omitted).
[13]
Plascon-Evans
at 641D.
[14]
Société des Produits Nestlé SA & another
v International Foodstuffs Co & others
[2015] 1 All SA
492
(SCA) para 44, an expungement claim.
[15]
Per Harms AJA in
Reckitt & Colman SA (Pty) Ltd v SC Johnson &
Son SA (Pty) Ltd
1993 (2) SA 307
(A) at 319G-H, summarising the
approach in
Hoechst Pharmaceuticals (Pty) Ltd v The Beauty Box
(Pty) Ltd (in Liquidation) & another
1987 (2) SA 600
(A) at
617-20. Both of these matters concerned claims for passing off.
[16]
Adidas Sportschuhfabriken Adi Dassler KG v Harry Walt & Co
(Pty) Ltd
1976 (1) SA 530 (T).
[17]
Verimark (Pty) Ltd v BMW AG; BMW AG v Verimark (Pty) Ltd
2007
(6) SA 263 (SCA).
[18]
Verimark
para 5.
[19]
Verimark
para 8 (reference omitted).
[20]
Verimark
para 7.
[21]
Truworths Ltd v Primark Holdings
2019 (1) SA 179
(SCA) para
57 (reference omitted).
[22]
Section 2(1) of the Act.
[23]
Definition of ‘trade mark’ in s 2(1) of the Act.
[24]
Plascon-Evans Paints Ltd
at 639B-D dealing with the Trade
Marks Act 62 of 1963.
[25]
Adidas AG & another v Pepkor Retail Ltd
[2013] ZASCA 3.
[26]
Adidas AG
para 14 (reference omitted).
[27]
Section 34(4) of the Act.