improper motive, to desire to use the same mark in connection with their own products. The present matter
concerned a trade mark consisting of a shape. In such cases, the mark must be of a distinctive character and not
such as to enable certain traders to acquire a monopoly in the most appropriate shapes for the goods concerned. A
mark which is used to acquire such a monopoly in the most appropriate shape for the product would be regarded as
not being used for the purposes of a trade mark and consequently will not constitute a trade mark. The trade mark
in question was not seen to be unique in any way. The Court therefore concluded that the First Respondent was
attempting, through trade mark registration, to obtain a monopoly of a most appropriate shape for the tablet in
question. In examining the provisions of section 10(a), the Court found that the registration of the First
respondent's trade mark infringed upon the various provisions of this section. The application for expungement was
therefore granted.
Respondent's counterapplication
Much of the Respondent's claimed relief fell away during argument. The Court was then left with the issue of trade
mark infringement to deal with. The Court adopted the approach of another court faced with the same issue in
determining the legal principles applicable in a trade mark infringement matter and the general test to be applied in
establishing whether trade marks are confusingly similar. The onus is on the complainant to show the probability or
likelihood of deception or confusion. The Court decided that the best way to approach the issue was to look at it
from the perspective of the buyer. It was concluded that the First Respondent had failed to show an infringement of
its trade marks. An argument based on unlawful competition was similarly dismissed.
Notes
For Competition see LAWSA Reissue (Vol 2, paras 376 408)
For Trade Marks see LAWSA (Vol 29, paras 1 266)
Cases referred to in judgment
("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed. H N refers to
corresponding headnote number.)
South Africa
AdcockIngram Laboratories Ltd v SA Druggists Ltd and another 1983 (2) SA 350 (T)
Aercrete South Africa (Pty) Ltd and another v Skema Engineering Co (Pty) Ltd and others 1984 (4) SA 814 (D)
Agriplas (Pty) Ltd and others v Andrag & Sons (Pty) Ltd 1981 (4) SA 873 (C)
Atlas Organic Fertilisers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and others 1981 (2) SA 173 (T)
Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd and another [2000] 2 All SA 1 (A); 2000 (2) SA 771 (A)
Cointreau et cie v SA Pagan International 1991 (4) SA 706 (A)
Combrinck v De Kock (1887) 5 SC 405
Danco Clothing (Pty) Ltd v NuCare Marketing Sales and Promotions (Pty) Ltd and another 1991 (4) SA 850 (A)
Distillers Corporation (SA) Ltd v Stellenbosch Farmers Winery Ltd 1979 (1) SA 532 (T)
Page 129 of [2001] 2 All SA 126 (T)
Dun and Bradstreet (Pty) Ltd v SA Merchants Combined Credit Bureau (Cape) (Pty) Ltd 1968 (1) SA 209 (C)
Geary and Son (Pty) Ltd v Gove 1964 (1) SA 434 (A)
Harvey Tiling Co (Pty) Ltd v Rodomac (Pty) Ltd and another 1977 (1) SA 316 (T)
Hoechst Pharmaceuticals (Pty) Ltd v The Beauty Box (Pty) Ltd (In Liquidation) and another 1987 (2) SA 600 (A)
Knox D'Arcy Ltd and others v Jamieson and others 1992 (3) SA 520 (W)
Laboratoire Lachartre SA v ArmourDial Incorporated 1976 (2) SA 744 (T)
Lorimar Productions Inc and others v Sterling Clothing Manufacturers (Pty) Ltd; Lorimar Productions Inc and others v
Dallas Restaurant 1981 (3) SA 1129 (T)
Luster Products Inc v Magic Style Sales CC [1997] 1 All SA 327 (A); 1997 (3) SA 13 (A)
Matthews and others v Young 1922 AD 492
McDonald's Corporation v Joburgers DriveInn Restaurant (Pty) Ltd and another [1996] 4 All SA 1 (A); 1997 (1) SA 1 (A)
Minister of the Interior v Machadodorp Investments (Pty) Ltd and another 1957 (2) SA 395 (A)
Multi Tube Systems (Pty) Ltd v Pointing and others 1984 (3) SA 182 (D)
Organon Laboratories Ltd v Roche Products (Pty) Ltd 1976 (1) SA 195 (T)
Philip Morris Inc and another v Marlboro Shirt Co SA Ltd and another 1991 (2) SA 720 (A)
PlasconEvans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) F
Premier Hangers CC v Polyoak (Pty) Ltd [1997] 1 All SA 134 (A); 1997 (1) SA 416 (A)