Beecham Group Plc and Others v Triomed (Pty) Ltd (100/01) [2002] ZASCA 109; [2002] 4 All SA 193 (SCA); 2003 (3) SA 639 (SCA) (19 September 2002)

Beecham Group Plc and Others v Triomed (Pty) Ltd (100/01) [2002] ZASCA 109; [2002] 4 All SA 193 (SCA); 2003 (3) SA 639 (SCA) (19 September 2002)

The Supreme Court of Appeal held that the registered shape of the Augmentin tablet was not inherently capable of distinguishing Beecham's goods from those of other manufacturers, nor had it acquired distinctiveness through use. The evidence established that the oval, bi-convex tablet shape is common in the pharmaceutical industry and serves functional purposes, such as ease of swallowing and coating. The registration of the shape mark was found to be contrary to section 10(5) of the Trade Marks Act, as the shape is necessary to obtain a specific technical result and its registration would limit the development of the relevant art. The appeal was dismissed, and the expungement of the shape...

Citation
[2002] ZASCA 109
Parties
Appellant: Beecham Group Plc; Appellant: SmithKline Beecham Pharmaceuticals (Pty) Ltd; Respondent: Triomed (Pty) Limited
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
19 September 2002
Case Number
100/01
Procedural Posture
Civil Appeal / Appeal From the Transvaal Provincial Division; Judgment on Merits
Outcome
Appeal dismissed with costs, including costs of two counsel.
Judges
Harms, Scott, Mpati, Conradie, Jones
Legal Topics
Trade Mark Registration, Distinctiveness, Technical Functionality, Pharmaceutical Products, Shape Marks
Intellectual Property Commercial and Corporate Trade Mark Registration Distinctiveness Technical Functionality Pharmaceutical Products Shape Marks

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 16 Party arguments 2 Amounts and remedies 2
Sign in to unlock

Parties

Beecham Group Plc

Appellant

SmithKline Beecham Pharmaceuticals (Pty) Ltd

Appellant

Triomed (Pty) Limited

Respondent

Procedural Posture

Civil Appeal / Appeal From the Transvaal Provincial Division; Judgment on Merits

Legal Issues

  1. 1 Whether the registered shape of the Augmentin tablet constitutes a valid trade mark under South African law.
  2. 2 Whether the shape mark is inherently or through use capable of distinguishing Beecham's goods from those of others.
  3. 3 Whether the shape is excluded from registration because it is necessary to obtain a specific technical result or limits the development of the relevant art.

Ratio Decidendi

The Supreme Court of Appeal held that the registered shape of the Augmentin tablet was not inherently capable of distinguishing Beecham's goods from those of other manufacturers, nor had it acquired distinctiveness through use. The evidence established that the oval, bi-convex tablet shape is common in the pharmaceutical industry and serves functional purposes, such as ease of swallowing and coating. The registration of the shape mark was found to be contrary to section 10(5) of the Trade Marks Act, as the shape is necessary to obtain a specific technical result and its registration would limit the development of the relevant art. The appeal was dismissed, and the expungement of the shape...

Court Disposition

Appeal dismissed with costs, including costs of two counsel.

Orders

  • The appeal is dismissed.
  • Beecham Group Plc and SmithKline Beecham Pharmaceuticals (Pty) Ltd are ordered to pay the costs of the appeal, including the costs of two counsel.