30 Sep Soles at the Heart of Unusual Trademark Case
Soles at the Heart of Unusual Trademark Case
Business Day (South Africa) (Bdlive.co.za)
September 11, 2013
By Amanda Visser
The registration of the sole of a shoe as a trademark is not surprising in the world of intellectual property protection, and neither is the shape of a chocolate or the colour of the wrapping of a certain chocolate brand.
Shoe soles have been in the spotlight recently in a case between Futura Footwear and Novita Shoes in South Africa.
Futura, the maker of Bata Toughees, has taken Novita to court, claiming its shoes have a similar wavy sole pattern as those of Bata Toughees.
Novita disputes this, saying the soles of a shoe play no role in the purchasing decision
According to a newspaper report, the case has been postponed to next year.
Waldo Steyn, senior associate at law firm Edward Nathan Sonnenbergs’ intellectual property division, said a sole design would probably be classified as a three-dimensional mark in terms of the Trade Marks Act.
He said shoe soles were protected as a trademark in other jurisdictions when a maker could prove its soles had unique features that “flagged” the origin of the product and distinguished them from those of its competitors. He referred to a case in the US where French shoe designers were allowed to lay claim to iconic red-soled shoes.
According to a CNN report, shoe designer Christian Louboutin was allowed by a federal appeals court to enforce a US trademark of the red-lacquered sole when it contrasted with the colour of the rest of the shoe. According to the decision, the signature red sole was introduced in 1992 and the red-lacquered outsole was registered as a trademark in 2008.
Mr Steyn said a 3-D mark such as the sole of a shoe would rarely be accepted on the basis of “inherent distinctiveness”, as opposed to a word such as Coca-Cola or Woolworths. He also referred to the specific purple colour of the Cadbury’s chocolate wrapping that is being protected in some jurisdictions because of its “acquired distinctiveness”. People who see the colour associate it with the brand. The chocolate-drop shape of Hershey’s Kisses is also protected as a trademark in some jurisdictions because of that characteristic.
“There is a greater acceptance of 3-D marks, but it still remains a requirement to show that the product has an acquired distinctiveness,” he said.
Mr Steyn said a factor that might have to be considered by the courts in the Bata Toughees case is how people choose a pair of shoes to buy.
“A factor that might come into play is that in a society with low literacy levels, features like sole design might play a significant role,” he said.