Lubbe NO and Others v Millennium Style (Pty) Ltd and Others

The appellants, trustees of a trust owning several registered trade marks relating to shoe sole designs, sought an interdict in the High Court to prevent the respondents from allegedly infringing six trade marks registered in Class 25 (footwear). The respondents were competitors in the footwear market, including a former employee of the appellants, and manufactured shoes with similar sole designs. The respondents counter-applied for rectification of the trade mark register, arguing that the marks—consisting of shapes and configurations of shoe soles—were not registrable trade marks under the Trade Marks Act 62 of 1963. The High Court dismissed the infringement application and ordered the expungement of the marks. The appellants appealed to the Supreme Court of Appeal, primarily challenging the expungement and the finding of no infringement.

The appeal was dismissed with costs, including the costs of two counsel. The expungement of all the impugned trade marks from the register was confirmed.

This case is significant for clarifying that, under the pre-1993 trade mark regime, shapes and configurations of products were not registrable trade marks and could not be protected by labelling them as 'devices'. It underscores the principle that trade mark law cannot be used to suppress legitimate competition and emphasises the requirement of trade mark distinctiveness as a source identifier. The judgment is frequently cited in South African trade mark jurisprudence on registrability, distinctiveness, and abuse of the trade mark register.