Bergkelder Bpk. v Vredendal Koöp Wynmakery and Others (105/05) [2006] ZASCA 5; 2006 (4) SA 275 (SCA); [2006] 4 All SA 215 (SCA); 2006 BIP 128 (SCA) (9 March 2006)

Bergkelder Bpk. v Vredendal Koöp Wynmakery and Others (105/05) [2006] ZASCA 5; 2006 (4) SA 275 (SCA); [2006] 4 All SA 215 (SCA); 2006 BIP 128 (SCA) (9 March 2006)

The Supreme Court of Appeal held that the Bocksbeutel bottle, as registered by the appellant, was not capable of distinguishing its wine from those of other producers at the time of registration. The court found that the bottle shape was used internationally and locally by other producers, and when stripped of its labels, it could not serve as a badge of origin. The limitation to 'alcoholic beverages produced in South Africa' did not render the container inherently distinctive. The court rejected the argument that market dominance or use alone could confer distinctiveness, emphasizing that a trade mark must be inherently capable of distinguishing. Consequently, the registration was liable...

Citation
[2006] ZASCA 5
Parties
Appellant: Die Bergkelder Beperk; Respondent: Vredendal Koöp Wynmakery; Respondent: Johannes Jacobus Rossouw; Respondent: Willie Petri Brand
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
9 March 2006
Case Number
105/05
Procedural Posture
Civil Appeal / Appeal From Cape High Court; Leave Granted by Wagley AJ
Outcome
Appeal dismissed with costs.
Judges
Harms, Streicher, Cameron, Lewis, Cachalia
Legal Topics
Container Marks, Distinctiveness, Trade Mark Registration, Expungement, Badge of Origin, Shape Marks
Intellectual Property Commercial and Corporate Container Marks Distinctiveness Trade Mark Registration Expungement Badge of Origin Shape Marks

Case Brief

Summary, issues, holding and outcome

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Parties

Die Bergkelder Beperk

Appellant

Vredendal Koöp Wynmakery

Respondent

Johannes Jacobus Rossouw

Respondent

Willie Petri Brand

Respondent

Procedural Posture

Civil Appeal / Appeal From Cape High Court; Leave Granted by Wagley AJ

Legal Issues

  1. 1 Whether the Bocksbeutel bottle container mark was capable of distinguishing the appellant's wine from those of other producers at the time of registration.
  2. 2 Whether the respondent's use of a similar bottle infringed the registered trade mark under s 34(1)(a) of the Trade Marks Act 194 of 1993.
  3. 3 Whether the trade mark registration should be expunged for lack of distinctiveness.

Ratio Decidendi

The Supreme Court of Appeal held that the Bocksbeutel bottle, as registered by the appellant, was not capable of distinguishing its wine from those of other producers at the time of registration. The court found that the bottle shape was used internationally and locally by other producers, and when stripped of its labels, it could not serve as a badge of origin. The limitation to 'alcoholic beverages produced in South Africa' did not render the container inherently distinctive. The court rejected the argument that market dominance or use alone could confer distinctiveness, emphasizing that a trade mark must be inherently capable of distinguishing. Consequently, the registration was liable...

Court Disposition

Appeal dismissed with costs.

Orders

  • The appeal is dismissed with costs.