The High Court of South Africa, Kwazulu-Natal Division, Pietermaritzburg, on March 18, 2019, was called upon to decide if there was infringement in a case concerning the use of non-traditional shoe sole pattern trade marks.
Judge Trevor Gorven had to decide whether a shoe sole pattern of Novita Shoes CC (known as the retailer, Jet) so nearly resembled registered trade marks of Bata Brands SARL (Bata), as to be likely to deceive or cause confusion. Bata owned registrations covering footwear for a similar shoe sole pattern.
As a result of a number of factors, such as the likelihood that consumers would be struck by a dominant general impression of lines that are grouped together in a strikingly similar fashion on the soles in question, Judge Gorven held that Jet’s shoe sole patterns were likely to cause confusion or be deceiving. Furthermore, Judge Gorven held without much elaboration that properly conducted surveys are admissible as evidence of actual confusion or deception.
While survey evidence has in the past been held to carry significant probative value in determining whether a trade mark is “well known,” until this case, survey evidence to show deception or confusion has been held to carry less probative value. This position differs in the United States, where likelihood of confusion surveys are prevalent.
Judge Gorven further held that Jet’s express acknowledgment that the purpose of its design was to distinguish its sole from the registrations, contributed towards a finding that Jet used its sole as a trade mark. This finding was made despite the fact that Jet submitted arguments that it was not using its soles as trade marks.
This finding of trade mark use may be juxtaposed with another South African decision, Lubbe NO and others v. Millennium Style (Pty) Ltd and others, Case No. 69/06, in which it was held that the pattern of a shoe sole would typically be regarded by a consumer as ornamental, and seldom as a source identifier.
Based on past decisions, applicants and proprietors of shoe sole pattern trade marks have often had to contend with the question of whether a shoe sole pattern functions as a trade mark denoting origin and, if so, whether consumers rely on it as such. In this context, it could also be asked whether Jet could have avoided a finding of trade mark infringement had it challenged Bata’s registrations on the basis that they did not function as trade marks but as mere ornamentation.
This article was first published in the INTA Bulletin Law & Practice – Middle East and Africa Subcommittee.