United Kingdom
Société des Produits Nestlé SA v Cadbury UK Ltd [2014] EWHC 16 (Ch)
Referred to
503
Judgment
SWAIN JA:
[1] The first appellant ("Société des Produits Nestlé SA") and the second appellant ("Nestlé South Africa (Pty)
Ltd") who I will collectively refer to as Nestlé, and the first respondent ("International Foodstuffs Co") and the
second respondent ("Iffco South Africa (Pty) Ltd") who I will refer to as Iffco, are international competitors in
the sale of chocolates.
[2] The physical shape as well as the name of a chocolate bar marketed and sold by Iffco has given rise to the
present dispute. Nestlé alleged that these attributes of Iffco's "Break" chocolate bar, infringe trade marks
held by Nestlé in the "Kit Kat" chocolate bar, marketed and sold by it. It is also alleged that these attributes
result in the passing off of Iffco's chocolate bar for that of Nestlé.
[3] Nestlé unsuccessfully applied in the North Gauteng High Court (Louw J) for interdictory relief based upon trade
mark infringement and passing off. Nestlé was also unsuccessful in its attempt to expunge certain word trade
marks from the trade marks register held by Iffco in its chocolate bar.
[4] Iffco was in turn equally unsuccessful in its attempt, brought by way of a counterapplication before the court
a quo, to expunge certain shape trade marks held by Nestlé in its Kit Kat chocolate bar, as well as an
application to review the registration of these shape trade marks.
[5] Leave was granted by the court a quo to Nestlé and Iffco respectively to appeal against the dismissal of
Nestlé's application and the dismissal of Iffco's counterapplication, as well as the review application.
[6] Because the validity of the shape trade mark held by Nestlé, which it seeks to enforce against Iffco, forms the
principal basis for the relief sought by Iffco in its counter and review applications, it is necessary to deal firstly
with Iffco's appeal against the dismissal of these applications. This is so because if successful Nestlé's shape
marks will be rendered invalid and unenforceable.
Iffco's review application
[7] 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, lies the
contention that what was initially sought to be registered as trade marks, were pictorial devices to be placed
on packaging consisting of depictions of products, and not the threedimensional shapes of the chocolate bars
themselves. In addition, it was submitted that there was no endorsement which would indicate that the trade
marks were for the threedimensional shape of these goods.
[8] The pictorial representations as submitted by Nestlé for registration were as follows in respect of the 4 finger
wafer shape:
Page 496 of [2015] 1 All SA 492 (SCA)
and in respect of the 2 finger wafer shape:
[9] In terms of section 2(1) of the Trade Marks Act 194 of 1993 (the "Act") a "mark" is defined as:
". . . any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral,
shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the
aforementioned."
A shape may, accordingly, fall within the definition of a trade mark as defined in section 2(1) of the Act, 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."1
[10] In terms of regulation 13(1) of the Trade Marks Regulations (GNR 578, GG 16373 21 April 1995) every
application for the registration of a trade mark shall contain a representation, suitable for reproduction,
affixed to it "in the space provided" in the form TM1 for this purpose. In terms of regulation 13(3), three
dimensional marks must be represented in such a way that all the dimensions are clearly visible. In addition,
the pictorial representation of the mark must have the required degree of certainty for the public to know the
extent of the monopoly claimed.2