Counterfeiting Without Cloning: Key Legal Insights from Puma v Rampar Trading Ltd

Source: iStock (Puma Rudolf Dassler Sport Shoe)

In November 2010, the Supreme Court of Appeal (SCA) of South Africa delivered a landmark judgment in Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd [2011] 2 All SA 290 (SCA), a case that significantly clarified the legal ambit of counterfeiting under Section 1 of the Counterfeit Goods Act 37 of 1997. The case, which involved the internationally renowned sportswear brand Puma and Rampar Trading, a local retailer accused of selling shoes bearing marks similar to Puma’s registered “form strip” trademark, has since become a foundational precedent for trademark owners and legal practitioners in South Africa.

Background and Facts of the Case

Rampar Trading (Pty) Ltd owns a longstanding chain of retail shoe stores known as Dodo’s, which has been a recognised name in shoe retail and footwear for nearly a century in South Africa. The stores offer a mix of widely known branded shoes as well as a budget line sold under their own name and a distinctive device mark featuring a stylised letter “D.”

The controversy arose in September 2009 when law enforcement officials seized a shipment of shoes imported by Rampar Trading on suspicion of being counterfeit under South Africa’s Counterfeit Goods Act. Puma, the internationally renowned sportswear brand, claimed that the stripes on these shoes infringed upon its registered trademarks and amounted to counterfeit goods intended to deceive consumers. In response, Rampar Trading maintained that the stripes were simply decorative design features and did not infringe Puma’s trademark rights nor constitute counterfeiting.

Legal Issues Addressed by the Court

The Supreme Court of Appeal was tasked with determining the scope of “counterfeiting” under Section 1 of the Counterfeit Goods Act and whether Rampar’s shoes fell within that definition. Two key issues were at the heart of the dispute:

1. Whether counterfeiting under the Act requires exact or near-identical replicas of protected goods, or if it extends to “colourable imitations” likely to deceive consumers.

2. Whether design elements, such as Puma’s distinctive “form strip,” can function as trademarks and thus receive protection against unauthorised imitation.

Clarifying the Definition of Counterfeiting

The court’s ruling elaborated on the statutory definition of counterfeiting, which comprises two components:

• Manufacturing goods that are substantially identical copies of protected goods, and

• Producing goods bearing marks that are “colourable imitations” calculated to confuse or deceive the average consumer.

Crucially, the SCA rejected the lower court’s interpretation that counterfeiting necessitates “cloning” — an exact duplication of the trademarked product. The SCA emphasised that such a restrictive interpretation would undermine the legislative intent to protect trademark owners and consumers from deceptive imitations. Instead, the court held that counterfeiting encompasses any goods bearing marks sufficiently similar to cause confusion, regardless of superficial or additional design elements.

The Scope of “Protected Goods” and Notional Goods

Another pivotal aspect of the judgment was the court’s expansive interpretation of “protected goods” under the Act. The court explained that protected goods include not only actual products bearing a registered trademark but also “notional goods” — conceptualised goods that could bear the trademark, even if they have not yet been manufactured or authorised by the trademark owner.

This recognition of notional goods prevents counterfeiters from evading liability by producing items that are not exact replicas but are nonetheless likely to be confused with the trademark owner’s products. It effectively allows trademark owners to proactively protect their brands against unauthorised use, even in relation to future or hypothetical goods.

Trademark versus Decorative Elements

Rampar Trading’s defence centred on the argument that the contested stripes were decorative and not trademark-protected. The SCA disagreed, confirming that design features can function as trademarks if they serve as source identifiers recognised by consumers. Puma’s “form strip” was deemed a valid trademark, illustrating that brand identity extends beyond names or logos to include distinctive design elements.

This principle safeguards brands that rely on unique design aspects as a core part of their identity, ensuring these elements are protected from unauthorised imitation or misuse.

Legal and Market Implications of the Ruling

The decision holds profound significance for trademark owners, manufacturers, retailers, and consumers in South Africa. It affirms that anti-counterfeiting laws protect trademarks not only against slavish copies but also against “colourable imitations” that threaten to erode brand goodwill or mislead consumers.

For businesses, the ruling signals that superficial modifications or additional design features will not necessarily insulate counterfeiters from liability. The judgement sends a strong message that attempts to circumvent trademark rights through slight alterations will face serious legal consequences.

Furthermore, the ruling aligns South African law with international intellectual property frameworks, including the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), to which South Africa is a party. It promotes a broad, purposive approach to anti-counterfeiting legislation, reinforcing market integrity and consumer protection.

Enforcement and Practical Considerations

The case also underscores the vital role of enforcement agencies under the Counterfeit Goods Act. Coordinated efforts between brand owners and authorities, such as the search, seizure, and detention of suspected counterfeit goods, are essential tools in combatting counterfeiting.

This practical enforcement mechanism ensures that intellectual property rights are upheld effectively in the marketplace, protecting legitimate businesses and consumers alike.

A Robust Legal Framework for Intellectual Property Protection

The Puma AG v Rampar Trading decision is a watershed moment for South African trademark law and anti-counterfeiting enforcement. By clarifying that counterfeiting encompasses more than exact copies, recognising the importance of design trademarks, and extending protection to notional goods, the judgment fortifies the legal tools available to brand owners.

In an era where brand reputation is an invaluable commercial asset, this ruling equips businesses in fashion, sportswear, and related sectors to better protect their identity and consumer trust. It also reinforces South Africa’s commitment to robust intellectual property protection aligned with global standards, fostering an environment conducive to innovation, investment, and fair competition.

For businesses operating within this space, vigilance in brand protection and awareness of this precedent are crucial to avoid legal pitfalls and ensure compliance with South African trademark laws.