South Africa Case Law

Dart Industries Incorporated and Another v Botle Buhle Brands (Pty) Ltd and Another (636/2021)

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)

Court

Supreme Court of Appeal

Case number

636/2021

Judges

Dambuza, Makgoka, Gorven, Goosen, Masipa

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 establishe…

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• Trade Mark Distinctiveness
• Shape Marks
• Passing Off
• Trade Mark Cancellation
• Likelihood Of Confusion

Societe Des Produits Nestle SA and Another v International Foodstuffs Co and Others (100/2014)

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)

Court

Supreme Court of Appeal

Case number

100/2014

Judges

Navsa ADP, Theron JA, Swain JA, Zondi JA, Dambuza AJA

The SCA held Nestlé’s Kit Kat shape marks were valid and infringed by Iffco’s similar Break bars, but rejected Nestlé’s word-mark claim.

• Trade Mark Infringement
• Shape Marks
• Technical Functionality Exception
• Blurring
• Passing Off
• Expungement Of Trade Marks

Lubbe NO and Others v Millenium Style (Pty) Ltd. (69/06)

Lubbe NO and Others v Millenium Style (Pty) Ltd. (69/06) [2007] ZASCA 10; [2007] 4 All SA 692 (SCA); 2007 (6) SA 241 (SCA); 2007 BIP 133 (SCA) (16 March 2007)

Court

Supreme Court of Appeal

Case number

69/06

Judges

Harms, Brand, Cloete, Ponnan, Cachalia

The Supreme Court of Appeal held that the trade marks in question, consisting of shoe sole designs, were not registrable under the Trade Marks Act 62 of 1963, as shapes and configurations were excluded from registration and could not be considered 'devices' for trade mark purposes. The marks lacked distinctiveness in the trade mark sense, serving only ornamental or functional roles and not indicating source of origin. The evidence showed that the marks had not been used as trade marks for over twenty years and would be perceived by the public as tread designs. The respondents were found to be…

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• Trade Mark Expungement
• Distinctiveness
• Shape Marks
• Rectification Of Register
• Trade Mark Infringement

Bergkelder Bpk. v Vredendal Koöp Wynmakery and Others (105/05)

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)

Court

Supreme Court of Appeal

Case number

105/05

Judges

Harms, Streicher, Cameron, Lewis, Cachalia

The Supreme Court of Appeal held that the Bocksbeutel bottle mark lacked distinctiveness and could not function as a badge of origin, so the appeal failed.

• Container Marks
• Distinctiveness
• Trade Mark Registration
• Expungement
• Badge Of Origin
• Shape Marks

Beecham Group Plc and Others v Triomed (Pty) Ltd (100/01)

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)

Court

Supreme Court of Appeal

Case number

100/01

Judges

Harms, Scott, Mpati, Conradie, Jones

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 lim…

Source excerpt

• Trade Mark Registration
• Distinctiveness
• Technical Functionality
• Pharmaceutical Products
• Shape Marks