Société des Produits Nestlé SA and another v International Foodstuffs Co and others
[2015] 1 All SA 492 (SCA)
Division:
SUPREME COURT OF APPEAL
Date:
27 November 2014
Case No:
100/2014
Before:
MS NAVSA ADP, KGB SWAIN, LV THERON, DH ZONDI JJA and N
DAMBUZA AJA
Sourced by:
P Zachia
Summarised by:
DPC Harris
. Editor's Summary . Cases Referred to . Judgment .
[1] Trademarks Expungement of Unregistrable trademarks Trade Marks Act 194 of 1993 Section 10(5) Section
precludes the registration of a mark which consists exclusively of the shape, configuration, colour or pattern of goods
where such shape, configuration, colour or pattern is necessary to obtain a specific technical result, or results from the
nature of the goods themselves.
[2] Trademarks Infringement Interdictory relief Trade Marks Act 194 of 1993 Section 34(1)(a) Section requires
applicant to establish that respondent used the mark in respect of the same goods for which the trade marks were
registered which was either identical to, or so nearly resembled the registered trade mark, so as to be likely to deceive or
cause confusion.
[3] Trademarks Shape trademarks Infringement of Test Court is required to compare the registered trade mark and
the allegedly infringing mark through the eyes of the ordinary consumer, both sidebyside and apart and determine,
whether as a matter of global first impression there exists a likelihood of deception or confusion.
Editor's Summary
The appellants (collectively referred to by the court as "Nestlé") and the first two respondents (collectively referred
to as "Iffco") were international competitors in the sale of chocolates. They were embroiled in a dispute about the
physical shape as well as the name of a chocolate bar marketed and sold by Iffco. Nestlé alleged that these
attributes of Iffco's "Break" chocolate bar, infringed trademarks held by Nestlé in the "Kit Kat" chocolate bar,
marketed and sold by it. It also alleged that those attributes resulted in the passing off of Iffco's chocolate bar for
that of Nestlé. Seeking interdictory relief based upon trade mark infringement and passing off, Nestlé approached
the High Court. Its application was however, dismissed. Iffco was equally unsuccessful in its attempt, brought by
way of a counterapplication before the court a quo, to expunge certain shape trademarks held by Nestlé in its Kit
Kat chocolate bar, as well as an application to review the registration of those shape trademarks. Each party
obtained leave to appeal to the present Court.
Held Iffco's appeal would be dealt with first. At the heart of Iffco's application to review certain administrative
decisions taken by the Registrar in the registration process of Nestlé's 4 wafer finger and 2 wafer finger shape
trade mark registrations, lay the contention that what was initially sought to be registered as trademarks, were
pictorial devices to be placed on packaging consisting of depictions of products, and not the threedimensional
shapes of the chocolate bars themselves. A shape may fall within the definition of a trade
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mark as defined in section 2(1) of the Trade Marks Act 194 of 1993, to be used for the purpose of distinguishing the
goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or
services connected in the course of trade with any other person. The interpretation of a trademark application must
be made objectively and through the eyes of an ordinary consumer in the same way as the infringement of a trade
mark is determined. That test requires a court to compare the registered trade mark and the allegedly infringing
mark through the eyes of the ordinary consumer, both sidebyside and apart and determine, whether as a matter
of global first impression there exists a likelihood of deception or confusion. The Court was satisfied that the
representations of the marks as contained in the application by Nestlé for registration as trademarks, viewed
objectively through the eyes of the notional ordinary consumer, would be perceived as twodimensional depictions
of threedimensional shapes and not twodimensional devices. The chocolate bars had been marketed and sold in
South Africa under the name "Kit Kat", in the shape depicted in the applications for registration, for the past 50
years. In addition, Nestlé had also for a considerable period of time made extensive use of this shape of the
chocolate bar in advertisements to promote its sale.
Iffco raised an additional argument based on an endorsement entered against both the 2 finger and the 4 finger
wafer shape trade mark applications. Nestlé argued that the endorsement simply clarified and confirmed the
monopoly in which it was seeking rights, whereas Iffco contended that by entering the endorsement the relevant
trade marks were transformed from device marks, into marks consisting of the shape of goods. Iffco submitted that
the Registrar is not entitled in terms of section 16(5) of the Act, to permit amendments to an application that would
substantially affect the identity of the trade mark. That argument was rejected by the Court on the basis that no
substantial amendment was made to the shape mark of Nestlé and no prejudice or injury resulted.
The Court also confirmed the correctness of the High Court's decision not to grant the application by Iffco in terms of
section 10(5), for the expungement of Nestlé's finger wafer shape trademarks. Section 10 of the Act deals with
unregistrable trademarks, and in subsection (5) precludes the registration of a mark which consists exclusively of