THE SUPREME COURT OF APPEAL OF SOUTH AFRICA

JUDGMENT

Case No: 59/10

In the matter between:

PUMA AG RUDOLF DASSLER SPORT

Appellant

and

RAMPAR TRADING (PTY) LTD

First  Respondent

THE COMMISSIONER OF SOUTH AFRICAN
REVENUE SERVICES

Second Respondent

MAGISTRATE H C NIEUWOUDT NO

Third Respondent

Neutral citation: Puma v Rampar Trading (59/10) [2010] ZASCA 140 (19 November
2010)

Coram:
Harms DP, Heher, Snyders and Tshiqi JJA and R Pillay AJA

Heard:
03 November 2010

Delivered:
19 November 2010

Summary:
Counterfeit Goods Act 37 of 1997 – definition of ‘counterfeiting’ –
definition of ‘protected goods’.

___________________________________________________________________

ORDER
___________________________________________________________________

On appeal from: Kwa-Zulu Natal High Court (Durban) (Koen J sitting as court of
first instance):
‘The appeal is upheld with costs and the order of the court below substituted with an
order dismissing the application with costs.’
___________________________________________________________________

HARMS DP (HEHER, SNYDERS AND TSHIQI JJA AND R PILLAY AJA concurring)

HARMS DP:
[1] The interpretation of the Counterfeit Goods Act 37 of 1997 remains
contentious but since no visible steps have been taken to solve the problems it
remains our duty to interpret it as best we can.1
[2] The appellant, Puma AG Rudolf Dassler Sport (Puma for short), is a German
company with an international reputation in the field of sportswear, including sport
shoes. It has, in addition to its Puma word and leaping puma device trade marks, a
number of other device trade marks referred to generically, as the form strip device.
These are registered in class 25, usually in respect of clothing, footwear and
headgear.
[3] The basic form strip device can, in very general terms, be described as a
tapering curved stripe running from the upper left to the lower right. If applied to the
side of a shoe it conventionally runs from the upper portion of the heel to meet the
sole at the middle of the shoe. Two form strip marks (one of which is in issue in this
appeal) formed the subject matter of a recent trade mark infringement judgment of
this court in Puma AG Rudolf Dassler Sport v Global Warming (Pty) Ltd 2010 (2) SA
600 (SCA).
[4] The respondent, Rampar Trading (Pty) Ltd, is the owner of a chain of retail

1 For an earlier discussion see AM Moolla Group Ltd v The Gap Inc 2005 (2) SA 412 (SCA).

shoe stores known as Dodo’s. It sells generally known branded shoes but also a
budget line under its name mark and a device mark consisting of a stylised letter D.
The Dodo name has been known for about a century in relation to shoe stores and
shoes although the respondent’s relationship with the original business is somewhat
tenuous.
[5] During September 2009, inspectors appointed under the Act detained a
consignment of shoes imported by Rampar on suspicion that the shoes were
counterfeit. The shoes, of which there were four types, bear some or other stripe
device on the side of the shoe which, according to Puma, infringed one or other of its
form strip marks and were indeed counterfeit. They also bear a Dodo trade mark.
Rampar’s main contention was that stripe devices were only decorative and did not
perform a trademark function
[6] Acting on the suspicion (enforced by an affidavit on behalf of Puma) that the
goods were counterfeit the police applied for and obtained a search and seizure
warrant in terms of s 6 of the Act, and an inspector seized the goods on 28 October
2009, and removed them to a counterfeit depot.
[7] Rampar filed an application in the Durban High Court seeking, first, the
setting aside of the warrant and the subsequent search and seizure. This was soon
abandoned. It also sought an order under s 7(4) of the Act, namely a declaration that
the goods were not counterfeit and for a consequent order that the goods be
returned.2 This was the case before the court below and, with its leave, the case
before us.
[8] The application turned in this regard primarily on two issues. The first, to
which I shall refer as the cloning issue, can best be described with reference to a
simplified example.  A trade mark is registered in class 25 in relation to clothing,
shoes and headgear. The rights owner uses the trade mark on shoes only but the
alleged counterfeiter uses the identical mark on headgear or on a completely
different type of shoe. One can also conceive of a situation where the rights holder
has not used the trade mark at all. In these cases the infringer (because it will be

2 Section 7(4)(a): ‘Any person prejudiced by a seizure of goods in terms of section 4(1), may at any
time apply to the court on notice of motion for a determination that the seized goods are not
counterfeit goods and for an order that they be returned to him or her.’

trade mark infringement), although using the identical trade mark, did not clone
goods bearing a trade mark of the rights holder. Rampar argued that unless
trademarked goods have been cloned they cannot be ‘counterfeit’ within the
meaning of the Act and that cloning of the mark itself and used on goods covered by
the mark is not enough. What this would have meant in the context of counterfeiting
of money notes is that one cannot make a counterfeit R300 note because the
Reserve Bank does not produce one.
[9] The court below agreed with this submission of Rampar’s counsel and
granted an order in terms of s 7(4)(a) without finding it necessary to deal with the
second issue namely whether the shoes were counterfeit within the meaning of the
definition of ‘counterfeiting’ in s 1 of the Act. This depends on whether the shoes
bore a sufficiently identical trade mark to that of the registered mark. It should be
noted that one of the four types has been released from detention by the
inspectorate on this ground and that leaves for consideration the other three.
THE FIRST ISSUE: IS CLONING REQUIRED?
[10] The background to the Act was dealt with in AM Moolla where it was pointed
out that the Act had its genesis in the Trips agreement.3 Although South Africa is
party to Trips by virtue of its membership of the World Trade Organisation, the
provisions of Trips do not form part of our municipal law. This means that although
one would tend to interpret consequent legislation to conform to the provisions of
Trips, the legislation on a proper interpretation may nevertheless not comply with the
Trips obligations or, on the other hand, have stricter requirements.4
[11] The object of the Act is to prevent dealing in counterfeit goods. This object is
obtained by prohibiting a number of acts in relation to counterfeit goods, such as (in
very general terms) possession, manufacture, sale, exhibition, distribution,
importation or export of such goods for commercial as distinct from private or
personal purposes (s 2(1)). A person who performs a prohibited act will be guilty of
an offence if at the time of the act or conduct, the person knew or had reason to
suspect that the goods to which the act or conduct relates, were counterfeit goods;
or failed to take all reasonable steps in order to avoid any such dealing from being

3 Agreement on Trade-Related Aspects of Intellectual Property Rights.
4 Compare Gallo Africa v Sting Music (40/10) [2010] ZASCA 96 para 18.

performed or engaged in with reference to the counterfeit goods (s 2(2)).
[12] The prohibition is directed to the protection of those ‘intellectual property
rights’ (‘IPRs’) defined in s 1(1) of the Act. These are copyright (in relation to which
the term ‘counterfeiting’ is inappropriate – it should have been ‘piracy’), trade marks
registered in terms of the Trade Marks Act 194 of 1993, unregistered well-known
foreign marks that are entitled to local protection by virtue of art 6bis of the Paris
Convention,5 and certain marks protected by s 15 of the Merchandise Marks Act 17
of 1941. For present purposes we are concerned with registered trade marks only.
[13] ‘Counterfeiting’ is defined in s 1(1) in a somewhat opaque manner but one
thing is clear: it is not the same as copyright or trade mark infringement – it requires
more. This follows from the proviso to this definition, namely that ‘the relevant act of
counterfeiting must also have infringed the intellectual property right in question’.
And it follows from the fact that the Act did not refer back to or reproduce the
definitions of infringement in the IPR statutes. This appears to be logical because ‘to
counterfeit’ ordinarily means to make an imitation of something in order to deceive or
to make a copy of something.
[14] The elements of counterfeiting under para (a) of the definition are in logical
order: 6
(i)  manufacturing, producing or making of any goods
(ii)  in the Republic or elsewhere
(iii)  without the authority of the owner of any IPR
(iv)  subsisting in the Republic
(v)  in respect of protected goods
(vi)  whereby they are imitated

5 Paris Convention for the Protection of Industrial Property.
6 Section 1: ‘Counterfeiting (a) means, without the authority of the owner of any intellectual property
right subsisting in the Republic in respect of protected goods, the manufacturing, producing or
making, whether in the Republic or elsewhere, of any goods whereby those protected goods are
imitated in such manner and to such a degree that those other goods are substantially identical
copies of the protected goods.’

(vii) in such manner and to such a degree that they are substantially identical
copies of the protected goods.
[15] Counterfeiting under para (b), in turn, means: 7
(i)  manufacturing, producing or making, or applying to goods
(ii)  in the Republic or elsewhere
(iii)  without the authority of the owner of any IPR
(iv)  subsisting in the Republic
(v)  in respect of protected goods
(vi)  the subject matter of that IPR, or a colourable imitation
(vii) so that the ‘infringing’ goods are calculated to be confused with or to be
taken as being the protected goods of the IPR owner.
[16] The first question is whether paras (a) and (b) are intended to cover both
copyright piracy and trademark counterfeiting. (Para (c), which deals with
counterfeiting of goods protected under the Merchandise Marks Act can be
discounted for present purposes.) The authors of Webster and Page8 believe quite
reasonably that they do. I have to disagree because in my judgment para (a) was
intended to deal with piracy while para (b) was intended to deal with trademark
counterfeiting. Although both (a) and (b) refer in general terms to ‘any’ IPR, there are
other indications that each is limited to either the one or the other. The words
‘substantially identical copies’ in para (a) are phrased in copyright terms while the
concepts in para (b), ‘colourable imitation’ and ‘calculated to be confused’, are cast
in traditional trademark terminology. Another indication is the reference to ‘applying’
to goods in para (b), something that in spite of the definition of ‘apply to’, cannot
refer to copyright but clearly does apply to trade marks. Also, para (b) covers the use

7 Section 1: ‘Counterfeiting (b) means, without the authority of the owner of any intellectual property
right subsisting in the Republic in respect of protected goods, manufacturing, producing or making, or
applying to goods, whether in the Republic or elsewhere, the subject matter of that intellectual
property right, or a colourable imitation thereof so that the other goods are calculated to be confused
with or to be taken as being the protected goods of the said owner or any goods manufactured,
produced or made under his or her licence.’
8 South African Law of Trade Marks (4 ed) para 17.5.

of identical marks by the use of the phrase ‘the subject matter of that IPR’ and it is
accordingly not necessary to rely on para (a) to prohibit the use of ‘copies’ of trade
marks. Last, the definition of IPR distinguishes between the three rights, namely
trade marks, copyright and merchandise marks, and it is reasonable to assume that
the definition of counterfeiting would do the same, although it did not do so in the
same sequence.
[17] The next issue concerns the meaning of ‘protected goods’. It has two
meanings. First, it means –
‘(a)
goods featuring, bearing, embodying or incorporating the subject matter of an
intellectual property right with the authority of the owner of that intellectual property right, or
goods to which that subject matter has been applied by that owner or with his or her
authority.’
Applied to trade marks, protected goods are genuine goods that feature the
registered trade mark. With reference to the other provisions of the Act it simply
intends to protect cloning of goods incorporating the relevant IPR.
[18] The second meaning is –
‘(b)
any particular class or kind of goods which, in law, may feature, bear, embody or
incorporate the subject matter of an intellectual property right only with the authority of the
owner of that intellectual property right, or to which that subject matter may in law be
applied, only by that owner or with his or her authority, but which has not yet been
manufactured, produced or made, or to which that subject matter has not yet been applied,
with the authority of or by that owner (whichever is applicable).’
[19] Shorn of verbiage para (b) covers any particular class or kind of goods which
may bear a registered trade mark, but has not yet been produced or to which it has
not yet been applied with the authority of or by the IP owner. In other words, the
goods protected by para (b) are not actual goods but notional goods, ie, goods to
which the owner could have applied the trade mark. It means that counterfeiting is
possible without cloning and the fact that Puma may not have produced a shoe
bearing the particular trade mark does not mean that Rampar’s shoes could not be
counterfeit.
[20] Confirmation of the fact that the Act contemplates counterfeiting of notional

goods is also to be found in s 3(2)(b), which deals with the information a complainant
has to supply when laying a complaint. It concludes by requiring a specimen of the
relevant protected goods where the IPR ‘that subsists in respect of or has been
applied to protected goods contemplated in paragraph (a) of the definition of
“protected goods” in section 1(1)’. Significantly, it does not require a specimen in the
case of para (b) because one would imagine there cannot be one.
[21] Counsel for Rampar submitted that in spite of the wide wording, para (b)
should be read to conform with Trips which, it was suggested, does not require such
protection. This, he said, is supported by a statement by the which was quoted with
approval by this court in Cadac v Weber-Stephen [2010] ZASCA 105 where it was
said that ‘counterfeit cases involve an infringer attempting to reproduce – and
substitute for – the goods (not just the trademark) of the trademark owner’. A study
sponsored by the New Zealand government, for instance, states as follows in this
regard:9
‘The term "counterfeiting" is generally understood to mean the unauthorised manufacture
and distribution of copies of such goods and works which are intended to appear to be so
similar to the original as to be passed off as genuine examples. This includes use of famous
brands on clothing not manufactured by or on behalf of the owner of the trade mark, and
exact copies of CDs containing music or software, which are traded in a form intended to be
indistinguishable to ordinary consumers from the genuine product.’
Counsel also relied on a statement in Webster and Page,10 submitting that the
authors were of the view that para (b) was intended to protect only famous foreign
marks that have not been registered and goods that have been produced elsewhere
but not in South Africa.
[22] Whatever the general understanding of the term ‘counterfeiting’ or the motive
behind the anti-counterfeiting Trips provisions, the limitation is not to be found in
Trips or the clear wording of the Act.11 The extract was quoted in Cadac v Weber-

9 AJ Park & Son for the Ministry of Commerce Consultant’s Report on Theft of Intellectual Property –
Piracy and Counterfeiting para B7
http://www.med.govt.nz/templates/MultipageDocumentPage____1830.aspx (accessed 10 November
2010).
10 Para 17.4
11 Whether para (b) can apply to copyright piracy is not clear.

Stephen in another context to make a different point. As far as Webster and Page
are concerned, I believe that counsel misread the learned authors.
THE SECOND ISSUE: ARE THE SHOES COUNTERFEIT?
[23] It follows that in my judgment the court below erred in requiring cloning. It is
now necessary to consider the second question, namely whether the shoes were
counterfeit. As mentioned above, the answer has to be sought in para (b) of the
definition of counterfeiting. In view of the common cause facts the only remaining
issue is whether the marks applied to Rampar’s shoes are ‘the subject matter’ or ‘a
colourable imitation’ of any of Puma’s registered trade marks. To be ‘the subject
matter’ means, as mentioned, that the Rampar mark must be identical to a Puma
trade mark. An ‘imitation’, in turn, is by definition a copy, and the adjective
‘colourable’ reinforces the fact that the copy is counterfeit. In other words, the
definition says no more than that a counterfeit must be counterfeit. That is why it
must be ‘calculated to be confused with’ or ‘taken as being’ the registered mark and
why it involves deliberate and fraudulent infringement of trademarks.12
[24] This test is not the same as the standard trade mark infringement test of
‘likely to deceive or cause confusion’13 but counterfeiting, by its very nature, amounts
a fortiori to trade mark infringement.  Reference during argument to the test to be
applied to determine the likelihood of deception and confusion, confusing similarity,
to passing-off principles, imperfect recollection, momentary confusion, the
prospective purchaser, that a substantial (ie, not negligible) number of people have
to be confused, evidence about the public’s perception and how Rampar intended to
market the goods was, accordingly, singularly out of place and unhelpful.
[25] My main problem with the manner in which Puma’s case was presented was
that it took a bundle of related (some associated) trade marks, referred to them as its
form strip mark (in the singular), and then argued that the marks on the Rampar
shoes were counterfeit. The heads of argument relied on five marks in relation to
three shoes. During argument the number came down to two and when it transpired
that one of them had not been registered at the time of seizure, Puma was left with

12 Cadac v Weber-Stephen [2010] ZASCA para 6.
13 Trade Marks Act s 34(1). Trade mark infringement and not counterfeiting was the issue in Puma v
Global Warming.

one, called its ‘split’ form strip which is registered under no 2004/14412.
[26] This trade mark consists of the basic form strip device of a tapering curved
stripe running from the upper left to the lower right, but splits into two with an
inverted V, widening towards the lower more substantial part. If applied to the side of
a shoe it would run (but not necessarily so) from the upper portion of the heel to
meet the sole at the middle of the shoe.
[27] There can be little doubt that the white Rampar shoe (C) has a copy of the
split form strip device on its inner and outer sides. The strip is in blue and the split is
white. This device however has additionally two white strips that run more or less
parallel with the strip form thereby framing it. But these stripes make no impression
against the white background of the shoe. Rampar sought to distinguish this
reproduction of the Puma mark by relying on the presence of a prancing dragon and
the Dodo device mark on the heel and the name Dodo Sport on the inside of the
shoe. It also said that the mark would have been perceived as decorative and not as
a trade mark. I disagree on both counts. The dragon and the Dodo marks are at best
subsidiary and they do not touch the essence of the split form strip. One also cannot
use a trade mark and then argue that it was used as ornamentation. It could be
different if one is dealing with changes to the mark, for instance, if the registered
mark consists of three stripes it would be a question of fact whether the use of two or
four stripes would be perceived as decorative or as trade mark use but one could
not, I would think, use the same argument in relation to the use of three stripes. On
the other hand, I could not understand Puma’s reliance on the presence of the
dragon, which was said to be similar to the prancing horse on the Ferrari mark and
which Puma is licensed to use, to establish counterfeiting. It was probably based on
a confusion of counterfeiting with passing off.
[28] Shoe B is virtually identical to the one just mentioned but differs, importantly,
in colour. It is a black shoe. It also contains the split form device, which is now in
black. The V of the split is in white and the outer parallel stripes are in white. In other
words, the Rampar shoe contains a counterfeit split form framed in contrasting
white. In my judgment the addition of the frame does not change the result. Rampar
took the registered mark and in spite of the presence of the frame the mark on the
shoe is still ‘calculated to be confused with’ or ‘taken as being’ that of Puma.

[29] The third shoe (A) also incorporates the split form but in addition has an
inverted form strip made of a different material at the heel but which appears to be
part of the construction of the shoe. It, too, in my assessment, is counterfeit because
even with the inverted strip the shoe is still ‘calculated to be confused with’ or ‘taken
as being’ that of Puma especially since the inverted device is identical to Puma’s
‘traditional’ strip form.
CONCLUSION
[30] It follows that the court below had erred and that the appeal must be upheld.
The following order is made:
‘The appeal is upheld with costs and the order of the court below substituted with an
order dismissing the application with costs.’

_______________________
L T C HARMS
DEPUTY PRESIDENT

APPEARANCES

APPELLANT/S

I Joubert

Instructed by Spoor & Fisher Pretoria

C/o Chapman Dyer Inc Durban

Matsepes Inc Bloemfontein

RESPONDENT/S:
G Marriott

Instructed by D M Kisch Inc Sandton

C/o Barkers Attorneys Durban

Rossouws Attorneys Bloemfontein
THE SUPREME COURT OF APPEAL
OF SOUTH AFRICA

MEDIA SUMMARY – JUDGMENT DELIVERED IN THE
SUPREME COURT OF APPEAL
MEDIA SUMMARY – JUDGMENT DELIVERED IN COURT OF
APPEAL

19 November 2010

STATUS: Immediate

PUMA AG RUDOLF DASSLER SPORT v RAMPAR TRADING (PTY)
LTD AND OTHERS

Please note that the media summary is intended for the benefit of the media and
does not form part of the judgment of the Supreme Court of Appeal

The Supreme Court of Appeal (SCA) upheld an appeal against an order of the
KwaZulu-Natal High Court, (Durban) and held that the shoes imported by the
respondents were counterfeit.

The respondent is the owner of a chain of retail shoe stores known as Dodo’s and
has a budget line under its name mark together with a device mark incorporating a
stylised letter D. A consignment of shoes, imported by the respondent, were
detained on suspicion that the shoes were counterfeits of the appellant’s brand
PUMA, and were later seized by the police.

The respondent then proceeded to file an application in the Durban High Court for
an order setting aside the warrant and the search and seizure. The respondent
furthermore sought an order in terms of s 7 (4) of the Counterfeit Goods Act 37 of
1997, that the goods were not counterfeit and they should therefore be returned. The
court a quo found in favour of the respondent and granted the order in terms of s 7
(4) of the Act and neglected to deal with the issue of whether the shoes were indeed
counterfeit. The appellant’s then proceeded to lodge an appeal against this decision.

The respondent argued that his shoes could be distinguished from that of the
appellant’s as it contained the presence of a prancing dragon and the Dodo device
mark on the heel and the name Dodo Sport on the side which was distinguishable
from the Puma trade marks of the appellant. The court dismissed this argument,

contending that the marks do not come close in comparison to the split form strip so
as to distinguish nor could it be viewed as ornamentation.

The SCA had to decide whether the respondent discharged the onus on it, in terms
of s 7 (4) of the Act, to show that the goods in question were not counterfeit, and
whether actual cloning of a product was required. The SCA found that counterfeiting
was possible without cloning. The fact that the appellant may not have produced a
shoe bearing the particular trade mark was not an indication that the shoes imported
by the respondent were not counterfeit.

The SCA considered whether the marks applied to the respondents shoes are ‘the
subject matter’ or ‘a colourable imitation’ of the appellant’s trade marks in terms of
the Act. It was decided that to be ‘the subject matter’, the respondent’s mark must be
identical to the appellant’s Puma trade mark, whereas an ‘imitation’, is essentially a
copy and the word ‘colourable’ merely affirms that the copy is counterfeit. It was on
this premise that the court concluded that ‘calculated to be confused with’, or ‘taken
as being’ the registered trade mark, as stated in the Act, involves a deliberate and
fraudulent infringement of trade marks.

The appellant relied on five marks, which during argument it reduced to two, one of
which had not been registered at the time of seizure and therefore the appellant was
only left with one mark, called its split form strip, registered under no. 2004/14412.
The SCA held that there could be little doubt from the evidence presented that the
shoes of the respondent were counterfeit.

--- ends ---