Is use of a mark for decorative purposes a defence to trade mark infringement?
13/10/2010

The SCA held in the Verimark case that use of a mark, otherwise than as a trade mark, does not amount to trade mark infringement . A question that arises is whether or not the decorative use of a mark amounts to trade mark use and what factors should be taken into account in making the determination?

In the judgement of the Supreme Court of Appeal (“SCA”) in the matter between Puma AG Rudolf Dassler Sport (“Puma”) v Global Warming (Pty) Limited (“Global Warming”) , handed down on 11 September 2009, the court merely raised the issue of whether or not the tapering split stripe on Global Warming’s shoe (depicted below) would have been perceived by the purchasing public as a source identifier or as a mere adornment. Unfortunately, the issue was not considered by the court. Nevertheless, when raising the issue, the court referred to the Verimark, Bergkelder and Lubbe cases in a footnote to its judgement.



In the Verimark case, the use of the BMW logo on the bottle of Verimark’s car polish (depicted below) was found not to be trade mark use, because Verimark’s use of the BMW logo was not use as, and could not be perceived to be, a badge of origin. Inter alia on this basis, the court held that the use of the BMW logo in this manner did not amount to trade mark infringement.


In the Bergkelder case, a container mark (a wine bottle depicted below), which was registered as a trade mark, was successfully expunged on the basis that the container was not capable of distinguishing, in the sense that the public would not perceive the container as a badge of origin, but merely as another container. In other words, the characteristics of the container were merely decorative and were incapable of performing a trade mark function.


Similarly in the Lubbe case, trade mark registrations in respect of the pattern or shape of a sole of a shoe were successfully expunged on the basis that the pattern or shape would be regarded by the purchaser as either ornamental or as part of the design of the shoe tread and that it is seldom that it will be considered to be a source identifier. The characteristics of the sole of the shoe, in essence, were found to be decorative.

Taking into consideration the above SCA cases and the “source identifier” or “trade origin” tests that it is applying, it appears that the court in the Puma case was suggesting, when it referred to these decisions in the footnote, that the use by Global Warming of its tapering split stripe on its shoe was decorative and did not amount to trade mark use. If one then follows the court’s reasoning in the Verimark decision, it is arguable that such decorative use would not amount to trade mark infringement and that decorative use in this manner is arguably a defence to trade mark infringement. However, the defences to trade mark infringement are listed in section 34(2) of the Trade Marks Act 194 of 1993 (“the Act”) and the decorative use of a mark, as a form of a non-trade mark use, is not expressly included. Therefore, the “defence” contemplated here is more in the nature of a challenge to the cause of action than a true defence.

A decorative mark would fall within the definition of a mark in terms of the Act, which is any sign capable of being represented graphically and includes a device, shape, configuration, pattern, ornamentation, colour or container for goods or any combination thereof. A decorative mark can still constitute a trade mark and be registered as such if it falls within the definition of a trade mark and does not fall foul of sections 9 and 10 of the Act.

The most important requirement for registrability in terms of section 9 of the Act is that a trade mark must be “capable of distinguishing”. In determining whether a mark is capable of distinguishing, the test is a factual one and often a matter of degree. Certain marks are inherently capable of distinguishing while others have the capacity to distinguish as a result of their prior use. In the writers’ view, although decorative marks may not always have an inherent capacity to distinguish, they may acquire such a capacity through use. This is particularly so in the context of clothing and other fashion items that are typically adorned with decorative marks, thus rendering the marks less likely to be perceived as trade marks in the absence of use.

The court in the Puma case did not deem it necessary to consider the effect of the judgment of the European Court of Justice in the case between Adidas AG (“Adidas”) v Marca Mode CV (“Marca”) , where the issue was whether the use by Marca of two stripes on sportswear infringed Adidas’s three stripe motif trade mark, or whether it would have been perceived as mere adornment/decorative use. The court of first instance ruled in favour of Marca, inter alia , on the basis that stripes and simple stripe logos are generally signs which must remain available to competitors and do not, therefore, lend themselves to exclusive rights. The court referred to this as the “requirement of availability”.

One must bear in mind that the relevant trade mark infringement provisions of our Trade Marks Act are similar to the corresponding provisions of the UK’s Trade Marks Act and the European Directive . Therefore, the Adidas decision directly impacts on South African trade mark law and may find application in our courts. The decision of the court of first instance in the Adidas case was appealed on a point of law, namely whether the requirement of availability may be used as a defence to infringement or whether it should only be taken into account for purposes of invalidity or refusal of a trade mark registration or application, as the case may be.

In the Adidas case, Marca attempted to justify its use of the two striped motifs by relying on the purely decorative nature of its mark and the requirement of availability principle. The court of first instance stated that Adidas’ three striped motif was not very distinctive; however, owing to the investment in advertising its mark, it had acquired a considerable distinctive character and became well-known.

There can be no question that a striped pattern on clothing and footwear is commonly used in trade and the court balanced the interests of the trade mark proprietor against those of his competitors regarding the use of striped devices. It was held on appeal that, although it is important to determine whether the public perceives a mark which is used by a third party as a mere decoration applied to the goods, it is not a defence to trade mark infringement. The court upheld the point of law and held that the requirement of availability and the decorative nature of a trade mark should only be taken into account for purpose of invalidity or refusal of a trade mark registration or application.

In view of the Adidas judgment, use of a trade mark for decorative purposes cannot and, in the writers’ view, should not constitute a defence to trade mark infringement. However, the registrability of a decorative trade mark can be attacked on the basis that the mark is purely decorative and is not capable of distinguishing within the meaning of Article 3 of the European Directive (Sections 9 and 10 of the Act are our corresponding provisions).

Adidas used and registered its mark as “a trade mark composed of three vertical, parallel stripes of equal width which are featured on the sides of sports and leisure garments in a colour which contrasts with the basic colour of those garments.” Adidas’s trade mark is limited to a specific position and colour, which has acquired distinctiveness. In the writers’ view, a decorative mark such as stripes should not be the subject of exclusive rights, unless these rights are limited in one way or another i.e. the position and colour scheme of the mark. A proprietor may acquire rights in a decorative mark as a result of the specific manner in which the decorative mark is used and registered. Therefore, when registering a trade mark that is decorative in nature, the endorsements are crucial to ensure that the trade mark is not vulnerable to expungement.
Nishan Sing
Senior Associate
nishan-s@adamsadams.co.za
Philip Haupt
Attorney
philip-h@adamsadams.co.za