Yossi Barel v Popular Trading CC and Others

Yossi Barel, the appellant, is the registered proprietor in South Africa of the trade mark ENRICO COVERI in various classes, including footwear (class 25). Popular Trading CC, the first respondent, imports and distributes footwear in South Africa bearing the ENRICO COVERI mark, which it sources from Italian manufacturers licensed by Enrico Coveri S.R.L., the original Italian fashion house founded by the late designer Enrico Coveri. After the original South African registrations lapsed due to non-renewal, Mr Barel registered the mark in his own name and later lodged a complaint under the Counterfeit Goods Act 37 of 1997 (CGA). Acting on this complaint, a magistrate issued a search and seizure warrant under s 6 of the CGA, and footwear was seized from Popular Trading. Popular Trading applied urgently to the High Court to set aside the warrant and sought a declarator under s 7(4)(a) of the CGA that the seized goods were not counterfeit. The High Court set aside the warrant and ordered the return of the goods. Mr Barel appealed to the Supreme Court of Appeal.

The appeal was dismissed with costs. The order of the KwaZulu-Natal Division of the High Court setting aside the search warrant, declaring the seized goods not to be counterfeit, and directing their return to Popular Trading CC remained in force.

This decision reaffirms the distinction in South African law between trade mark infringement and counterfeiting under the Counterfeit Goods Act. It confirms that the CGA is aimed at combating deliberate and fraudulent imitation, not resolving bona fide trade mark disputes. The case limits the use of criminal-style seizure mechanisms in commercial intellectual property disputes and reinforces that such disputes should ordinarily be resolved under the Trade Marks Act.