THE SUPREME COURT OF APPEAL
REPUBLIC OF SOUTH AFRICA
JUDGMENT

Case number : 69/06
REPORTABLE
In the matter between :

ANDRIES PETRUS LUBBE NO

First Appellant
WILLEM PETRUS LUBBE NO

Second Appellant
HILTON SAVIN NO

Third Appellant
PAUL OLIVER SAUER MEAKER NO

Fourth Appellant
CORRIDA HOLDINGS (PTY) LIMITED

Fifth Appellant
CORRIDA SHOES (PTY) LIMITED

Sixth Appellant

and

MILLENNIUM STYLE (PTY) LIMITED

First Respondent
BRETT GEORGE HODGSON NO

Second Respondent
PULSE POLYURETHANE MANUFACTURERS
(PTY) LIMITED

`
Third Respondent
GUY BOWMAN

Fourth Respondent

and in the matter of a counter-application between:

ANDRIES PETRUS LUBBE NO

First Appellant
WILLEM PETRUS LUBBE NO

Second Appellant
HILTON SAVIN NO

Third Appellant
PAUL OLIVER SAUER MEAKER NO

Fourth Appellant

and

MILLENNIUM STYLE (PTY) LTD

Respondent

CORAM :

HARMS ADP, BRAND, CLOETE, PONNAN AND CACHALIA JJA
HEARD :

23 FEBRUARY 2007

DELIVERED :
16 MARCH 2007

Summary:
Trade marks – expungement – devices and shapes

Neutral Citation:
This judgment may be referred to as Lubbe NO v Millennium
Style [2007] SCA 10 (RSA)

JUDGMENT

HARMS ADP:

[1] This is a trade mark case. Msimang J, sitting in the high court,
dismissed an application for an interdict based on trade mark infringement of
six trade marks1 that belong to a Trust represented by its trustees. In
response to a counter-application for the rectification of the trade mark
register he ordered that the marks be expunged. He consequently dismissed
the infringement application having found in addition that there could in any
event not have been any infringement. He granted leave in relation to the
expungement only but this Court extended the scope of the appeal by
granting leave in relation to the infringement.

[2] There are cyber-squatters and there are those who squat on the trade
mark 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.

[3] This practice gives intellectual property law a bad name. It also throws
serious doubt on whether this part of the law covers anything intellectual.
Significantly, a few days before the hearing of the appeal the Trust admitted
that two of its marks did not have the ability to distinguish but nevertheless
sought to prevent their expungement on technical grounds. The reader may
be surprised to know that the Registrar had registered the one (TM
1987/9450) in Part A of the register in terms of the Trade Marks Act 62 of
1963, which meant that the Registrar was at the time satisfied that the mark
was distinctive. Maybe I should surprise the reader further by describing this
particular trade mark: it is a device for a shoe sole and the device consists of

1 TM 1998/14074; 1987/9452; 1987/9449; 1988/5584; 1987/9450; and 1987/9451, all registered in
Class 25 in respect of footware.

a single transverse stripe towards the end of the heel. The other mark (TM
1998/14074) covered by the Trust’s concession is simply the side view of a
shoe sole.

[4] But this case is not really about trade marks. It is about the suppression
of competition. The appellants are upset because a former employee went
into competition with them by making shoes that by virtue of their design and
construction and overall appearance are ‘an almost direct copy’ of a shoe
made by or under licence from the Trust. As said by the main deponent on
behalf of the appellants, Mr AP Lubbe, their case is essentially a simple one:
the trade marks are infringed because the respondents use the distinctive
characteristics of the appellants’ sole construction. Their unfair competition
case, it need be stated, fell apart in the high court and no attempt was made
to rebuild it.

[5] The appellants’ case invited an attack on the five trade marks registered
in Part A of the register under the 1963 Act on the ground that in each
instance the shape and configuration of a shoe sole was registered,
something not permitted by the 1963 Act. The appellants responded
vehemently by stating that they were entitled to register the shape and
configuration of a sole as a trade mark because it is a ‘device’.

[6] In cannot be gainsaid that shapes were not registrable under the 1963
Act as trade marks and calling shapes ‘devices’ made no difference to the
conclusion. See Weber-Stephen Products Co v Registrar of Trade Marks
1994 (3) SA 611 (T) at 615G-I; cf Koninklijke Philips Electronics NV v
Remington Products Australia Pty Ltd [2000] FCA 876 para 16. But, submitted
counsel for the appellants, we must ignore what the appellants had said about
the meaning of their trade marks because what was indeed registered were
devices, i.e., visual representations or illustrations capable of being
reproduced on a surface, whether by printing, embossing, or by any other

means (s 2(1) ‘device’). To explain the difference: the appellants’ case on the
papers was that the transverse stripe referred to represents an indication that
the end of the heel is bevelled. Now the argument is that the stripe is simply a
stripe printed or embossed on a sole. The argument becomes odd if regard is
had to TM 1988/05584. It clearly shows an ordinary heel of a shoe plus three
stripes of no particular distinctiveness. Counsel had to submit that what was
obviously intended to be a heel was in reality the impression of a heel but that
the use of a real heel would also infringe.

[7] This aspect of the case can be disposed of on two bases. The first is
this. The admission, disclaimer, memorandum, limitation or condition of each
of these registrations begins with this statement:

‘Die merk bestaan uit die devise van die patroon van ‘n SOOL, wat toegepas word op ‘n
SKOEISEL.’

Translated, it means that the mark consists of a device of the design of a sole
applied to footware. There is a big difference between a device which has to
be applied onto a sole (which could have been registered) and a design of a
sole (which could not). The wording confirms what the marks were obviously
intended to represent, namely the design of a sole, and how the appellants
impermissibly sought to enforce them.

[8] Once the conclusion is that these marks were not registrable under the
1963 Act, they have to be expunged. Under s 70 of the Trade Marks Act 194
of 1993, the validity of the original entry of a trade mark on the register
existing at the commencement of this Act must be determined in accordance
with the law then in force. Section 42 of the 1963 Act provided that (subject to
certain exclusions) trade marks registered in Part A are to be taken as valid in
all respects after seven years. One exclusion was if the trade mark offended
against s 16 which, in turn, prohibited a registration ‘contrary to law’. The

registration of the shape of an article was at the time contrary to law because
only ‘marks’ as defined (which excluded shapes) could be registered.

[9] The second basis relates to the trade mark value of distinctive shoe
soles and devices for soles. Under the 1993 Act devices, shapes and
configurations may be registered as trade marks. But the mere fact that they
may be distinctive does not mean that they are distinctive in the trade mark
sense, i.e. to indicate source of origin. Typically the pattern or shape of a shoe
sole would be regarded by the purchaser as either ornamental or as part of
the design of the shoe tread and it is seldom that it will be considered to be a
source identifier. The respondents’ evidence to this effect was not and could
not be gainsaid in any meaningful way. Indeed, if regard is had to the fact the
appellants have not in twenty years used any of these marks as trade marks
the conclusion becomes irresistible. (I shall refrain from asking why the marks
were not attacked on the ground of non-use.) See Bergkelder Bpk v
Vredendal Koöp Wynmakery [2006] SCA 8 (RSA) para 8-9; cf Adidas-
Salomon AG v Fitnessworld Trading Ltd Case C-408/01 (ECJ) para 38-42.
Attached to this judgment is a representation of all these marks and it will be
obvious from a mere glance that not one of the devices has any trade mark
significance and that they would be perceived by the public as sole tread
designs, whether functional or aesthetic.  Because these marks are
accordingly not capable of distinguishing in the trade mark sense they have to
be expunged from the register. See Bergkelder Bpk at para 14.

[10] Turning then to TM 1998/14074 which, as mentioned, consisted of the
side view of a shoe sole and which the appellants concede was and is
incapable of distinguishing, the case of the appellants is that the mark should
not have been expunged because the respondents are no longer persons
interested in the mark. This, according to the argument, is because the
appellants no longer rely on its infringement and because the respondents do
not allege that they wish to use that representation. This argument, which was

eventually not persisted in, can nevertheless be disposed of in a few words.
The question whether a party is an ‘interested person’ entitled to apply for the
rectification of the register under s 24 of the 1993 Act is determined at the
time of litis contestatio and once a party has legal standing, the other party
cannot by its action destroy the first mentioned party’s standing. The other
reason is this: a person in the trade area covered by the impugned trade mark
is in principle an interested party because such a person has an interest in
having the register clear of objectionable registrations. Cf Ritz Hotel Ltd v
Charles of the Ritz Ltd 1988 (3) SA 290 (A) at 307H-308E and Mars Inc v
Candy World (Pty) Ltd 1991 (1) SA 567 (A) at 574C.

[11] The question may fairly be asked why such a simple case has reached
this Court, especially after Galgut DJP had already held at the interlocutory
stage that the appellants do not have a prima facie case. In spite of the record
of some 650 pages it should not have, but the complexity of the argument
presented below and in the heads of argument may provide part of the
answer.

[12] The appeal is dismissed with costs, including those consequent upon
the employment of two counsel.

________________________
L T C  HARMS
ACTING DEPUTY PRESIDENT

AGREE:

BRAND JA
CLOETE JA
PONNAN JA
CACHALIA JA

THE SUPREME COURT OF APPEAL
REPUBLIC OF SOUTH AFRICA

MEDIA SUMMARY – JUDGMENT DELIVERED IN THE SUPREME COURT OF APPEAL

From: The Registrar, Supreme Court of Appeal

Date:
16 March 2007

Status:
Immediate

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

A LUBBE NO AND OTHERS v MILLENNIUM STYLE (PTY) LTD

The SCA dismissed this appeal with costs. The case concerned the validity of trade mark
registrations and their infringement. The trade marks were supposed to be devices to be
applied to shoe sales but were found to be an attempt to register shapes. The SCA also
found that the trade marks were inherently not capable of distinguishing.

The court expressed its displeasure about the ease with which “trade marks” are
registered and the use of the register for ulterior purposes.

--ends--