Beecham Group PLC and another v Triomed (Pty) Ltd
 4 All SA 193 (SCA)
Supreme Court of Appeal
19 September 2002
Harms, Scott, Mpati, Conradie JJA and Jones AJA
2003 (3) SA 639 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
 Intellectual property Trade marks Registration of shape as trade mark Where shape is not intended to be used to
distinguish owner's products from those of another, it cannot be regarded as a trade mark Application for expungement
from trade marks register therefore allowed.
Both parties involved in the present matter were players in the pharmaceutical industry. The Appellants sought the
upholding of a trade mark for the shape of a tablet, and a finding that the Respondent had infringed the trade
mark. The Respondent imported a tablet with the same composition and shape as that of the Appellants. In the
court a quo, the Respondent applied for the expungement from the trade mark register of the shape trade mark.
The Appellants launched a counterapplication for relief for trade mark infringement. The latter application failed
while that of the Respondent succeeded.
Held Interested parties may apply to court for the removal of an entry wrongly made or remaining on the trade
The first question posed by the Court was whether the Appellants' shape mark constituted a trade mark in terms
of section 10(1) of the Trade Marks Act 194 of 1993 ("the Act"). Section 2 of the Act established that a sign
represented graphically and consisting of a shape fell within the definition of a mark. The test was whether the
Appellants intended to use the shape to distinguish it from tablets sold by others, or to distinguish it from other
tablets. Posed differently, the question was whether a pharmacist would regard the shape alone as a guarantee
that the tablet was that of the Appellants. This led to the question of whether the mark was capable of
distinguishing within the meaning of section 9 of the Act. The first leg of that enquiry was whether, at the date of
application for registration, the mark was inherently capable of distinguishing the Appellants' tablets from those of
another. If not, the question was whether the mark was presently capable of distinguishing by reason of its use to
date. The Court noted that at the time of the launch of the tablet, another company had already been producing a
tablet with the shape and colour of the registered trade mark. This meant that the shape in question was not
inherently capable of distinguishing in the trade mark sense. Neither could it be found that the shape had become
distinctive through use.
The final question posed by the Court related to section 10(5) of the Act. This questioned whether the registered
shape of the goods was necessary to obtain a specific technical result. Evidence was led of the fact that the shape
in question did have a technical purpose. The registration of the mark therefore
Page 194 of  4 All SA 193 (SCA)
fell foul of the provisions of section 10(5) as registration of the shape would limit the development of the relevant
The appeal was accordingly dismissed with costs.
For Trade marks see LAWSA Reissue (vol 29, paras 1 266).
Cases referred to in judgment
AdcockIngram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W)
Agriplas (Pty) Ltd v Andrag & Sons (Pty) Ltd 1981 (4) SA 873 (C)
Biotech Laboratories (Pty) Ltd v Beecham Group plc and another 2002 (4) SA 249 (SCA)
Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and another  2 All SA 1 (2000 (2) SA 771) (SCA)
Dexion Europe Ltd v Universal Storage Systems (Pty) Ltd, unreported, Case number 500/2000 (SCA) ( 4 All SA
Luster Products Inc v Magic Style Sales CC  1 All SA 327 (1997 (3) SA 13) (A)