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.

由于许多因素，例如消费者可能会被有关鞋底上以惊人相似方式组合在一起的线条的主要印象所吸引，戈文法官认为 Jet 的鞋底图案很可能造成混乱或欺骗。此外，戈文法官没有详细说明，认为适当进行的调查可以作为实际混淆或欺骗的证据。

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 和其他人诉 Millennium Style (Pty) Ltd 和其他人, 第 69/06 号案件，其中认为鞋底的图案通常会被消费者视为装饰品，而很少被视为来源标识符。

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. 

本文首次发表于 INTA 公告法律与实践 - 中东和非洲小组委员会。