This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.
Session 8: Criminal Enforcement
Supreme Court of Appeal of South Africa [2025]: Yossi Barel v Popular Trading CC and Others, Case No. 1102/2023 [2025] ZASCA 94 case
Date of judgment: 23 June, 2025
Issuing authority: Supreme Court of Appeal
Level of the issuing authority: Appellate Instance
Type of procedure: Judicial (Civil)
Subject matter: Enforcement of IP and Related Laws, Trademarks
Appellant: Yossi Barel
Respondents: Popular Trading CC (First Respondent), the Minister of Police (Second Respondent), Shaun Hutcheon Carslow N O (Third Respondent), Captain L W W Tancrel N O (Fourth Respondent)
Keywords: Trademarks, Counterfeit goods, Criminal enforcement, Counterfeiting, Requirements for setting aside a warrant
Basic facts: The appellant, Mr. Yossi Barel, is a manufacturer and distributor of clothing and footwear in South Africa and the registered proprietor of the ENRICO COVERI trademark in several classes, including class 25 (footwear). In December 2021, he lodged a complaint under the Counterfeit Goods Act (CG Act) against the first respondent, Popular Trading CC (Popular Trading), which had for many years imported and distributed ENRICO COVERI branded footwear in South Africa. Popular Trading initially sourced footwear from a Chinese manufacturer but, from 2009 onwards, imported authentic footwear from licensees of Enrico Coveri SRL, an Italian company established by the late fashion designer, Mr. Enrico Coveri.
On the strength of Mr. Barel’s complaint, the fourth respondent, an inspector, applied for and obtained a warrant under s 6 of the CG Act from the third respondent, a magistrate, authorizing the search and seizure of Popular Trading’s stock. Before the warrant could be executed, Popular Trading launched an urgent application in the high court to set it aside and for an order declaring that the seized goods were not counterfeit in terms of s 7(4)(a). Despite execution of the warrant and seizure of footwear bearing the ENRICO COVERI mark, the high court held that Mr. Barel had not made out a case that the goods were counterfeit, set aside the warrant, and ordered the return of the seized goods.
Mr. Barel’s application for leave to appeal was refused by the high court but granted by the Supreme Court of Appeal. The crisp issue on appeal was whether the footwear imported by Popular Trading constituted counterfeit goods as defined in s 1(1)(b) of the CG Act, or whether they were authentic goods lawfully sourced from an overseas licensee, such that counterfeiting – which requires deliberate and fraudulent infringement – had not been established.
Held: The Supreme Court of Appeal dismissed the appeal with costs (majority), holding that Popular Trading’s footwear, imported from the authentic Italian license-holder, was not counterfeit. Counterfeiting under the CG Act requires deliberate and fraudulent infringement with an intention to deceive, which was absent here.
Relevant holdings in relation to criminal enforcement:
Not all trademark infringements amount to counterfeiting; counterfeiting requires ‘something more’ – deliberate and fraudulent intent to confuse or deceive.
Authentic goods imported from the rightful Italian brand owner cannot be considered counterfeit simply because another party registered the trademark locally.
The onus in an application under s 7(4)(a) of the CG Act rests on the applicant (here, Popular Trading) to prove on a balance of probabilities that the seized goods are not counterfeit.
Relevant legislation: Counterfeit Goods Act 37 of 1997, especially ss 1(1), 2, 3, 6, and 7(4)(a), Trade Marks Act 194 of 1993, particularly s 34(1)(a).