Societe Des Produits Nestle SA and Another v International Foodstuffs Co and Others (100/2014) [2014] ZASCA 187; [2015] 1 All SA 492 (SCA); 2014 BIP 317 (SCA) (27 November 2014)

Societe Des Produits Nestle SA and Another v International Foodstuffs Co and Others (100/2014) [2014] ZASCA 187; [2015] 1 All SA 492 (SCA); 2014 BIP 317 (SCA) (27 November 2014)

The Supreme Court of Appeal held that Nestlé's finger wafer shape trade marks are valid and enforceable. The shapes, while incorporating some functional elements, also possess distinctive non-functional features such as the plinth and high length-to-width ratio, which serve as badges of origin and are not solely...

Source-derived case information.

Citation
[2014] ZASCA 187
Parties
Appellant: Société des Produits Nestlé SA; Appellant: Nestlé South Africa (Pty) Ltd; Respondent: International Foodstuffs Co; Respondent: IFFCO South Africa (Pty) Ltd; Respondent: Registrar of Trade Marks
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
27 November 2014
Case Number
100/2014
Procedural Posture
Civil Appeal / Appeal From North Gauteng High Court, Pretoria
Outcome
Appeal by Nestlé upheld in respect of shape marks; cross-appeal by Iffco dismissed; Nestlé's appeal regarding word marks and expungement of Iffco's marks dismissed.
Judges
Navsa ADP, Theron JA, Swain JA, Zondi JA, Dambuza AJA
Legal Topics
Trade Mark Infringement, Shape Marks, Technical Functionality Exception, Blurring, Passing Off, Expungement of Trade Marks
Intellectual Property Commercial and Corporate Trade Mark Infringement Shape Marks Technical Functionality Exception Blurring Passing Off Expungement of Trade Marks

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Summary, issues, holding and outcome

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Parties

Société des Produits Nestlé SA

Appellant

Nestlé South Africa (Pty) Ltd

Appellant

International Foodstuffs Co

Respondent

IFFCO South Africa (Pty) Ltd

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Civil Appeal / Appeal From North Gauteng High Court, Pretoria

Legal Issues

  1. 1 Whether Nestlé's finger wafer shape trade marks are valid and enforceable under the Trade Marks Act.
  2. 2 Whether Iffco's 'Break' chocolate bar infringes Nestlé's registered shape and word trade marks.
  3. 3 Whether the Registrar's amendment to Nestlé's trade mark applications was permissible under s 16(5) of the Act.

Ratio Decidendi

The Supreme Court of Appeal held that Nestlé's finger wafer shape trade marks are valid and enforceable. The shapes, while incorporating some functional elements, also possess distinctive non-functional features such as the plinth and high length-to-width ratio, which serve as badges of origin and are not solely dictated by technical necessity. The Registrar's endorsement did not substantially alter the identity of the marks and was permissible under s 16(5). Iffco's 'Break' chocolate bars and packaging are almost identical to Nestlé's registered shapes, and their use is likely to cause confusion or deception among consumers. The evidence established that the shapes are well-known and...

Court Disposition

Appeal by Nestlé upheld in respect of shape marks; cross-appeal by Iffco dismissed; Nestlé's appeal regarding word marks and expungement of Iffco's marks dismissed.

Orders

  • The first and second respondents are interdicted from infringing the rights of the first applicant in trade mark registration numbers 1999/23579 (4 finger wafer shape) and 1999/23580 (2 finger wafer shape) by making unauthorised use, in the course of trade, in relation to chocolate and/or confectionary products of...
  • The first and second respondents are ordered to pay the first and second applicants' costs, including the costs of two counsel.