Dart Industries Incorporated and Another v Botle Buhle Brands (Pty) Ltd and Another (636/2021) [2022] ZASCA 170; [2023] 1 All SA 299 (SCA); 2023 (4) SA 48 (SCA) (1 December 2022)

Dart Industries Incorporated and Another v Botle Buhle Brands (Pty) Ltd and Another (636/2021) [2022] ZASCA 170; [2023] 1 All SA 299 (SCA); 2023 (4) SA 48 (SCA) (1 December 2022)

The Supreme Court of Appeal held that the Eco bottle's shape was not inherently distinctive, as similar shapes existed in the market and consumers would not perceive the shape alone as a badge of origin. There was no evidence that the shape had acquired distinctiveness through prior use, as Tupperware always marketed the bottle in conjunction with its well-known trade mark, not the shape itself. The mark therefore failed both the inherent and acquired distinctiveness tests, justifying cancellation under s 10(2)(a) of the Trade Marks Act. However, the court found that Tupperware had established substantial reputation and goodwill in the Eco bottle's get-up through extensive sales and...

Citation
[2022] ZASCA 170
Parties
Appellant: Dart Industries Incorporated; Appellant: Tupperware Southern Africa (Pty) Ltd; Respondent: Botle Buhle Brands (Pty) Ltd; Respondent: Companies and Intellectual Property Commission
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
1 December 2022
Case Number
636/2021
Procedural Posture
Civil Appeal / Appeal From Gauteng Division of the High Court, Pretoria
Outcome
Appeal partially upheld and partially dismissed. Trade mark registration cancelled; passing-off claim succeeds.
Judges
Dambuza, Makgoka, Gorven, Goosen, Masipa
Legal Topics
Trade Mark Distinctiveness, Shape Marks, Passing Off, Trade Mark Cancellation, Likelihood of Confusion
Intellectual Property Commercial and Corporate Trade Mark Distinctiveness Shape Marks Passing Off Trade Mark Cancellation Likelihood of Confusion

Case Brief

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Parties

Dart Industries Incorporated

Appellant

Tupperware Southern Africa (Pty) Ltd

Appellant

Botle Buhle Brands (Pty) Ltd

Respondent

Companies and Intellectual Property Commission

Respondent

Procedural Posture

Civil Appeal / Appeal From Gauteng Division of the High Court, Pretoria

Legal Issues

  1. 1 Whether the shape of the Eco bottle is inherently or acquiredly distinctive as a trade mark under s 9(2) of the Trade Marks Act.
  2. 2 Whether the registered trade mark should be cancelled under s 10(2)(a) of the Trade Marks Act.
  3. 3 Whether the respondent's bottle constitutes passing-off and creates a likelihood of confusion with the appellants' Eco bottle.

Ratio Decidendi

The Supreme Court of Appeal held that the Eco bottle's shape was not inherently distinctive, as similar shapes existed in the market and consumers would not perceive the shape alone as a badge of origin. There was no evidence that the shape had acquired distinctiveness through prior use, as Tupperware always marketed the bottle in conjunction with its well-known trade mark, not the shape itself. The mark therefore failed both the inherent and acquired distinctiveness tests, justifying cancellation under s 10(2)(a) of the Trade Marks Act. However, the court found that Tupperware had established substantial reputation and goodwill in the Eco bottle's get-up through extensive sales and...

Court Disposition

Appeal partially upheld and partially dismissed. Trade mark registration cancelled; passing-off claim succeeds.

Orders

  • The applicants’ application in respect of trade mark infringement is dismissed.
  • The respondent’s counter-application for the cancellation of the trade mark registered in the name of the first applicant succeeds.