A legal battle over the import of expensive Italian footwear and related products ensued in the Supreme Court of Appeal, with one importer of the exclusive Enrico Coveri claiming the other importer is selling counterfeit shoes under this name.

Yossi Barel and Popular Trading CC both import and trade this footwear and other products in South Africa. Barel’s footwear is manufactured in China and Turkey under a registered trademark. Popular Trading sources its footwear from Italy.

The Enrico Coveri brand is named after iconic Italian fashion designer of the 1990s, Mr Enrico Coveri (EC), whose products were sold in the European Union, Japan, South Korea, the USA, and Hong Kong.

Mr Coveri built a strong EC brand that was synonymous with “Made in Italy” and extended into collections covering women, men, and children.

In 1990, Mr Coveri died and his sister, Silvanna Anna Maria Coveri (Ms Coveri) succeeded him and is currently the general manager of Enrico Coveri S.R.L, a company founded by Mr Coveri in Italy.

The trademark, Enrico Coveri, was registered in South Africa from 1985 and 1988. However, the trademark was removed from the register in Mr Coveri’s company’s name during 1998, 1999, and 2006 due to non-payment of the renewal fees.

Subsequently, Barel registered the trademark in his name in respect of several classes of goods, including footwear. Ms Coveri attributes the non-payment to the death of Mr Coveri, and the refusal by the registrar of trademarks in 2016 to re-register the mark in certain classes.

Popular Trading initially imported the EC footwear from a Chinese manufacturer. The EC footwear from the Chinese manufacturer was not authentic, though it bore the EC brand mark. It was only from 2010 that Popular Trading sourced authentic EC footwear from a licensee of EC known as United Brands Company (UBC).

In 2017, it terminated its licence agreement with UBC and engaged the services of a new licensee, Sport Commerce Italia S.R.L (SCI), which also supplied it with authentic EC footwear. Since 2009, Popular Trading has been importing authentic Italian footwear with the EC brand.

Barel, meanwhile, explained he had developed a new line of clothing and footwear in 2005, and after struggling to find a name for his brand, someone suggested the name Enrico Coveri, which shouted his brand perfectly.

When he found out Popular Trading also sold its wear under this name, Barel obtained a warrant for the police to search Popular Trading’s warehouse for purported counterfeit goods bearing the Enrico Coveri trademark.

Popular Trading launched an urgent application to set aside the warrant stating that its goods are not counterfeit. But the SAPS, meanwhile, executed the warrant, seizing all the footwear with the EC mark from Popular Trading.

In the subsequent urgent application, the high court concluded that in seeking the warrant, Barel failed to prove his opponent’s goods were counterfeit. The warrant was set aside, and the police were ordered to hand the footwear back.

Barel turned to the SCA to appeal against that order. The central issue was whether Popular Trading’s goods were counterfeit, given that Barel held the trademark.

The court concluded that Popular Trading’s goods were not counterfeit because they are authentic products from the original Italian manufacturer.

The court said the evidence does not establish that Popular Trading intended, at any stage, for the authentic footwear imported from EC’s licensees to be confused with Barel’s footwear or that Popular Trading intended its footwear to be taken as being Barel’s footwear.

It turned down Barel’s appeal.

zelda.venter@inl.co.za

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