Cointreau et Cie SA v Pagan International (373/89) [1991] ZASCA 89; 1991 (4) SA 706 (AD); [1991] 2 All SA 497 (A) (29 August 1991)

Cointreau et Cie SA v Pagan International (373/89) [1991] ZASCA 89; 1991 (4) SA 706 (AD); [1991] 2 All SA 497 (A) (29 August 1991)

The court held that the appellant's registered container trade mark was inadequately represented in the register, as it only depicted a two-dimensional aspect of the bottle and not its full three-dimensional form. The scope of the monopoly is limited to the representation as registered, and courts are not permitted to supplement this by reference to the actual bottle used in commerce. The comparison between the respondent's Alianca Triplice bottle and the registered mark revealed that the common features—colour, shape, and proportions—were primarily utilitarian or functional, widely used in the liqueur trade, and thus excluded from trade mark protection under section 10(2) of the Act. The...

Citation
[1991] ZASCA 89
Parties
Appellant: Cointreau et Cie SA; Respondent: Pagan International
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
29 August 1991
Case Number
373/89
Procedural Posture
Civil Appeal / Appeal From Dismissal of Infringement Application
Outcome
Appeal dismissed with costs, including costs of two counsel.
Judges
Corbett, Nestadt, Goldstone, Nicholas, Van Den Heever
Legal Topics
Trade Mark Infringement, Container Marks, Functional Features Exception, Likelihood of Confusion
Intellectual Property Commercial and Corporate Trade Mark Infringement Container Marks Functional Features Exception Likelihood of Confusion

Case Brief

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Parties

Cointreau et Cie SA

Appellant

Pagan International

Respondent

Procedural Posture

Civil Appeal / Appeal From Dismissal of Infringement Application

Legal Issues

  1. 1 Whether the respondent's use of the Alianca Triplice bottle infringed the appellant's registered container trade marks under the Trade Marks Act.
  2. 2 Whether the resemblance between the bottles was likely to cause deception or confusion among consumers.
  3. 3 Whether the features common to both bottles were primarily utilitarian or functional and thus excluded from trade mark protection under section 10(2) of the Act.

Ratio Decidendi

The court held that the appellant's registered container trade mark was inadequately represented in the register, as it only depicted a two-dimensional aspect of the bottle and not its full three-dimensional form. The scope of the monopoly is limited to the representation as registered, and courts are not permitted to supplement this by reference to the actual bottle used in commerce. The comparison between the respondent's Alianca Triplice bottle and the registered mark revealed that the common features—colour, shape, and proportions—were primarily utilitarian or functional, widely used in the liqueur trade, and thus excluded from trade mark protection under section 10(2) of the Act. The...

Court Disposition

Appeal dismissed with costs, including costs of two counsel.

Orders

  • The appeal is dismissed with costs, including the costs of two counsel.