SOUTH AFRICA: Supreme Court of Appeal Confirms Seized Goods Are Not Counterfeit

The Supreme Court of Appeal (SCA) decision in Yossi Barel v. Popular Trading CC and Others, (1102/2023) [2025] ZASCA 94, upheld the earlier decision of the High Court to set aside a search warrant for the attachment of alleged counterfeit footwear.

Popular Trading imported and distributed footwear bearing the mark ENRICO COVERI (EC) in South Africa. Its EC-branded footwear had been sourced from the authorized licensee of the Italian company founded by Enrico Coveri himself.

Yossi Barel, the registered proprietor in South Africa of the EC trademark in several classes of goods including footwear, obtained a search warrant according to the provisions of the Counterfeit Goods Act 37 of 1997 (CGA) for the seizure of Popular Trading’s EC-branded footwear on the basis that they were counterfeit goods.

Popular Trading made an urgent application to the High Court to set aside the warrant. The court set aside the warrant, declared that the seized goods were not counterfeit, and ordered the goods to be returned.

The High Court refused Mr. Barel’s application for leave to appeal. He then sought and obtained special leave to appeal to the SCA.

The SCA had to determine whether the seized goods were counterfeit goods as contemplated in the CGA. It handed down two judgments on June 23, 2025.

In the minority judgment, Popular Trading’s continued use of the EC mark while being aware of Mr. Barel’s registered trademark rights was held to amount to “counterfeiting” as defined in the CGA. The minority judgment would have upheld Mr. Barel’s appeal.

In the majority judgment, the court held that “[f]or counterfeiting to take place, the person who is alleged to have committed counterfeiting must be shown to have intended his goods to be confused with the protected goods or he must be shown to have intended his goods to be taken as being the protected goods.” As there was no evidence to suggest that Popular Trading had purchased the EC-branded footwear from the authorized licensees of the Italian EC company with the intention to confuse its footwear with Mr. Barel’s footwear, the appeal was dismissed.

The decision cannot be appealed unless leave is sought from the Constitutional Court in South Africa.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2025 International Trademark Association