Sole device marks get the boot

In A P Lubbe NO v Millennium Style (Pty) Limited (Case 69/06, March 16 2007), the Supreme Court of Appeal of South Africa has dismissed an application by the appellants, who are a group of trustees, to restrain the respondent from using various trademarks comprising design features applied to the soles of footwear.

The court also upheld the cancellation of six trademark registrations owned by the trust.

The court described the registered trademarks in the following uncomplimentary terms:

"and it will be obvious from a mere glance that not one of the devices has any trademark significance and that they would be perceived by the public as sole tread designs, whether functional or aesthetic."

The court's attitude to the appellants' case was immediately apparent from the second and third paragraphs of the judgment:

"There are cybersquatters and there are those who squat on the Trademarks Register. Judged by the papers in this case, the trust is an entity that used the register to stifle competition and not for its statutory purpose. The fact that there is no opposition to an application for registration or that there is not already something similar on the register does not mean that the application should proceed to grant.

This practice gives intellectual property law a bad name. It also throws serious doubt on whether this part of the law covers anything intellectual."

The respondent company was formed by a former employee of the appellants who had gone into competition with the trust by making shoes that, by virtue of their design construction and overall appearance, were "an almost direct copy" of shoes made by or under licence from the trust. The appellants complaint was that the registered trademarks were infringed by the respondent using the "distinctive characteristics of the appellants' sole construction".

In giving short shrift to the appellants' case and directing the cancellation of the various registrations, the Supreme Court held that:

• it could not be gainsaid that shapes per se were not registrable under the 1963 Trademarks Act (repealed in 1995) and attempting to identify shapes as 'devices' made no difference to the conclusion;
  
  
• endorsements entered against the registrations, namely that "the mark consists of a device of the design of a sole applied to footwear" made it clear that the marks were obviously intended to represent the designs of soles and were not devices as such;
  
  
• although Section 42 of the 1963 act was to the effect that trademarks registered in Part A of the register were to be taken as valid in all respects after seven years, one exception was if the trademark offended against Section 16 of the 1963 act, which prohibited a registration "contrary to law". The court held that the registration of the shape of an article in 1987 was contrary to law because only marks as then defined (which did not include shapes) could be registered;
  
  
• although shapes and configurations may be registered under the 1993 Trademarks Act, they must be capable of distinguishing. Typically, the pattern or shape of a shoe sole would be regarded by a purchaser as either ornamental or as part of the design of the shoe tread and it would seldom be considered to be a source identifier. The appellants had not used their marks for 20 years and the court held them not capable of distinguishing; and
  
  
• the appellants had conceded that the mark forming the subject of Registration 1998/14074 was not capable of distinguishing and had abandoned their reliance on it. They therefore argued that it should not be cancelled because the respondent had ceased to be 'interested persons' in its removal from the register. The court upheld the cancellation holding that, if a respondent is an interested person at the commencement of litigation, it does not cease being so if reliance on the trademark registration in issue is abandoned during the course of the case.

The very critical attitude of the Supreme Court to shape trademarks, recently expressed by it in Bergkelder Bpk v Vredendal Koöp Wynmakery [2006] SCA 8 (RSA), is again more than evident from this judgment.

Chris Job, Adams & Adams, Pretoria