[2]
Wine drinking is steeped in tradition and wine is usually marketed in conventional bottles. These include the
thick glass Champagne bottle used for sparkling wines, the Burgundy bottle with low shoulders, the Bordeaux
bottle with its broad shoulders, the maceshaped bottle used for Rhein and Moselle wines, the Alsace slender
flute, the Chianti bulbous fiasco and, relevant for present purposes, the socalled Bocksbeutel. By the name
hangs a tail. Translated literally from the German (though not entirely accurately) Bocksbeutel means a "goat's
pouch", which, it is said, is a humorous (according to others, vulgar) allusion to its shape. It is a short, flat,
broadbellied glass flagon or, to give another description, a bottle with a flattened globular shape.
The oldest surviving example of a Bocksbeutel is supposed to date back to 1400 BC. Originally they were made
from leather or wood. As many a shepherd or soldier could have testified, it is easier to carry a flat hipflask
against the body than a round one. These bottles have been in constant use by Franconian vintners for at
least 500 years for their better wines and in consequence Germany has tried to obtain protection for the
bottle as a geographical indication. The problem for Germany is, however, that the bottle shape had been
used in Bolzano province, Italy, for more than a
Page 218 of [2006] 4 All SA 215 (SCA)
century, and that it had been used classically by Portuguese wine growers for their famed vino verde.1
[3]
The appellant ("Bergkelder" I do not intend drawing a distinction between the appellant and its
predecessorintitle) adopted the Bocksbeutel bottle in the early 1950s for marketing its Grünberger line of
wines. It is a successful line and the only locally produced wine that was being sold in a Bocksbeutel.
Bergkelder sold about 2m litres of Grünberger wines to the value of about R25m during 2002. When it began
marketing this wine, Portuguese wines were being sold on the local market in Bocksbeutels and they are still
so being sold. Bergkelder, who imported standard bottles off the shelf, was audacious in applying for the
registration of the container as a design in 1962 (absolute novelty was required) and the Registrar
surprisingly (if that is the appropriate adverb to use in the circumstances) granted the application. When the
design registration was about to lapse, Bergkelder applied on 16 February 1977 for a trade mark registration
for the container. Importers of Portuguese wines opposed the application and eventually after more than
eight years the matter was settled. Bergkelder undertook to limit the registration to alcoholic beverages
"produced in South Africa". The
View Parallel Citation
Registrar happily endorsed the settlement and registered a container mark in the form of a Bocksbeutel in Part
A of the register in class 33 with the agreed limitation.2
[4]
The respondents also use a Bocksbeutel bottle for their locally produced wines. There is, however, this
difference: a large and prominent crayfish is embossed on the one flat side. The use of this bottle, Bergkelder
alleged, is an infringement of its registered trade mark. The respondents countered by denying that their
container so nearly resembles the registered mark "as to be likely to deceive or cause confusion", the test laid
d o w n b y section 34(1)(a) o f t h e T r a d e M a r k s A c t 194 of 1993. In addition, they have asked for an
expungement of the mark on various grounds, the main being that the container mark lacked at the time of
registration and still lacks the necessary capability to distinguish Bergkelder's wines from those of other wine
producers.
[5]
The registration was granted under the repealed Trade Marks Act 62 of 1963. This Act, for the first time, made
provision for the registration of containers as trade marks. The definition of "mark" in the Act as originally
promulgated included a "distinctive container" alongside the more conventional types of marks such as
devices, names, words and the like.
Page 219 of [2006] 4 All SA 215 (SCA)
The Act was amended during 1971 when the adjective "distinctive" was deleted from the definition. It did not
change much because, in order to have been registrable in Part A of the register, which was the case here, a
trade mark had to contain or consist of "a distinctive mark".
[6]
That containers could perform a trade mark function, ie, could be a badge of origin, was not at the time
generally accepted or recognised. As late as 1986, the House of Lords3 regarded as startling the idea that a
bottle in that case the classic CocaCola bottle could be a trade mark. One of the consequences of such
recognition, the Lords felt, would be to create perpetual monopolies in containers, something unacceptable
even if "the manufacturer has in the eyes of the public established a connection between the shape of the
container and the manufacturer."4
[7]
In due course it was generally recognised that not only containers