In a landmark ruling (Yossi Barel v Popular Trading CC and Others, SCA 2025), the Supreme Court of Appeal (SCA) drew a critical distinction between trade mark infringement and counterfeiting under the Counterfeit Goods Act of 1997, providing much-needed clarity for brand owners and traders alike.
The case centred on the use of the “ENRICO COVERI” trade mark on footwear, with the appellant, Yossi Barel, alleging that the respondent, Popular Trading CC, was dealing in counterfeit goods. The SCA upheld the High Court’s decision, dismissing Barel’s appeal and clarifying that not all trade mark infringements constitute counterfeiting. Counterfeiting requires a higher threshold, i.e., deliberate and fraudulent intent to deceive the public by passing off goods as those of the trade mark owner. The court emphasized that Popular Trading CC imported authentic ENRICO COVERI footwear from Italy, manufactured by the original brand’s licensee, and lacked the fraudulent intent necessary to classify the goods as counterfeit.
This ruling highlights that importing of genuine products, even if they conflict with local trade mark registrations, does not amount to counterfeiting unless there is intent to deceive. The SCA’s decision reinforces the principle that counterfeiting involves more than IP infringement, it demands proof of calculated deception, safeguarding legitimate trade while protecting intellectual property (IP) rights.
This ruling further underscores the importance of brand vigilance; businesses must proactively monitor misuse and note the importance of intent in distinguishing between IP infringement and counterfeiting.
Your brand is your most valuable asset—let us help you protect it. At Tshaya Mashabela Attorneys, we have specialised expertise in IP, ensuring trade mark and brand protection. Contact us today.
Author: Ntombi Nondaba | Marketing Officer
Approved by: Nicolette Biggar | Senior Consultant Attorney
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