Payen Components SA Ltd v Bovic CC and another 1995 (4) SA 441 (A)
Taylor & Horne (Pty) Ltd v Dentall (Pty) Ltd 1991 (1) SA 412 (A)
Triomed (Pty) Ltd v Beecham Group plc and others 2001 (2) SA 522 (T)
Valentino Globe BV v Phillips and another [1998] 4 All SA 1 (1998 (3) SA 775) (SCA)
Europe
Canon Kabushiki Kaisha v MetroGoldwynMayer Inc [1999] RPC 117 (ECJ)
United Kingdom
British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281 (ChD)
Philips Electronics BV v Remington Consumer Products [1998] RPC 283 (ChD)
Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809 (CA)
Roche Products Ltd and Another v Berk Pharmaceuticals Ltd [1973] RPC 473 (CA)
The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd [1938] 55 RPC 125 (PC)
University of London Press Ltd v Universal Tutorial Press Ltd [1916] 2 Ch 601
View Parallel Citation
Judgment
HARMS JA:
[1]
This appeal represents yet another battle in the war concerning generic pharmaceuticals. Recently we had
occasion to uphold a copyright claim relating to the package insert for a drug consisting of two substances,
amoxycillin (a semisynthetic penicillin) and potassium clavulanate, marketed by the appellants1 under the
trademark Augmentin.2 On this occasion
Page 195 of [2002] 4 All SA 193 (SCA)
Beecham wishes us to uphold a registered trade mark for the shape of a tablet, used in relation to Augmentin
tablets, and to find that the respondent ("Triomed") infringes that trade mark. Triomed imports a
pharmaceutical with the same composition and sells it under the name Augmaxcil. These tablets have the same
shape and colour (white) as Augmentin tablets but, whereas the name "Augmentin" is embossed upon the one
side of the latter, the Augmaxcil tablets are blank.
[2]
Triomed applied to the Transvaal Provincial Division for an order rectifying the Trade Marks register by the
expungement of the shape trade mark (no 95/13154). Beecham countered by applying for trade mark relief not
only in relation to this trade mark but also in respect of its word mark "Augmentin". Triomed's application
succeeded and the counterapplication was dismissed.3 The trial Judge, Smit J, subsequently granted leave to
Beecham to appeal against his orders, save the one dismissing the claim for infringement of the word mark.
[3]
Since its patent in relation to the composition has expired, Beecham no doubt wishes to protect its market in
some other way and this case provides another illustration of the tension between competition principles (the
right to compete and the right to copy) and intellectual property rights, and also between different types of
intellectual property rights. There is an everincreasing tendency to seek protection in a field not designed or
intended to cover the area. This is not always particularly difficult since intellectual property rights, because of
international developments, business realities and parliamentary involvement, may overlap or exist parallel to
each other. 4 By way of illustration: Functional designs originally could be protected as patents. Later it was
recognised that they may obtain copyright protection if derived from drawings. This, in its raw form, was
commercially unacceptable and section 15(3A) of the Copyright Act 98 of 1978 placed a lid on this protection.5
Some countries provide petty patent or design copyright protection for them while the Designs Act 193 of 1993
introduced design protection for them on lines similar
View Parallel Citation
to that for aesthetic designs. They did not have protection against passingoff 6 and could not be registered
as trade marks. The latter prohibition (subject to limitations) has fallen away as will be discussed in more
detail. (Whether the absolute passingoff rule still makes sense in the light of changes to the trade mark
position is a moot question; an adaptation along trade mark lines may be a future development.) The
requirements for protection under each head differ, as do the nature and duration of the protection. This
requires that each right should be kept firmly within its legitimate bounds.
[4]
The effective date of Beecham's trade mark is 3 October 1995 and it is registered for "antibiotics" in class 5
(which includes pharmaceutical preparations) of schedule 3 of the Trade Marks Regulations. According to
Page 196 of [2002] 4 All SA 193 (SCA)
the Registrar's certificate, the mark "consists in the shape and curvature configuration of a tablet substantially