II referred a number of questions to the European Court of Justice (the "ECJ") which has since answered them
in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd ("Philips III").9 Philips III differed from
Philips I and II in material respects and the basis of the judgment in the court below has consequently to be
revisited. These judgments all have persuasive force because section 10 of the Act is based upon the First
Council Directive 89/1988 of the Council of the European Communities "To approximate the laws of the Member
States relating to trade marks".10
Page 198 of [2002] 4 All SA 193 (SCA)
The British Trade Marks Act (1994 Ch 26) had to conform to the Directive and its interpretation by the ECJ binds
the English courts. This does not mean that we are bound to follow these authorities nor does our diluted
Dutch legacy require of us to submit meekly to a Philips dynasty. The Act remains a South African statute, which
must be interpreted and applied in the light of our law and circumstances. Local policy considerations may differ
from those applicable in Europe. The application of rules remains, even in Europe, a matter for local courts and
they differ occasionally amongst themselves.
[8]
Does the shape mark constitute a trade mark under section 10(1)? A sign capable of being represented
graphically and consisting of a shape or configuration falls within the definition of "mark" in the Act (section 2
sv "mark"). (The position under the repealed Trade Marks Act 62 of 1963 was different because it did not
permit the registration of shapes or configurations as trade marks.) A "trade mark" (other than a certification
trade mark or a collective trade mark)
"means a mark used or proposed to be used by a person in relation to goods or services 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."
View Parallel Citation
The function of a trade mark, in terms of the definition, is to indicate the origin of the goods or services. The
protection granted to a trade mark by section 34(1) and its secondary commercial functions, on the other
hand, extend beyond the "badge of origin" concept. This development, in commonlaw countries, is in no small
measure due to the seminal work of Frank I Scheckter "The Rational Basis of Trade Mark Protection" [1927] 40
Harvard Law Review 813.11 The question under section 10(1) nevertheless remains a "badge of origin"
inquiry.12
[9]
In essence, the test is whether Beecham used or proposed to use the shape of the tablet "for the purpose of
distinguishing" it from tablets sold by others or whether the function of the shape is to distinguish these
tablets from other tablets.
[10] In the Philips judgments (supra) the courts were concerned with a trade mark relating to the shape of an
electric shaver. Philips, under the trade mark "Philishave" had for many years sold a threeheaded rotary
shaver in
Page 199 of [2002] 4 All SA 193 (SCA)
which the heads were arranged in a triangular pattern which projected slightly above a triangular base plate.
Later it obtained a trade mark for the shape of the shaver head. The shaver is very popular and the public
recognises a Philishave from the shape of its head. The shape is functional and the protection of such designs
as trade marks was historically an anathema. In answer to a question put to it in Philips II, the ECJ held
"that there is no class of marks having a distinctive character by their nature or by the use made of them which is
not capable of distinguishing."
(Philips III paragraph 39). This means that the question whether a mark constitutes a trade mark as defined is
a factual matter and should be approached without any a priori disqualification or classification. Functionality per
se is no disqualification.
[11] The court below held that the pictorial representation of the mark is vague and does not have the required
degree of certainty for the public to know the extent of the monopoly claimed (at 539DF). The vagueness is
aggravated by the use of the adverb "substantially" in the registration. Beecham's answer is that since the
field is crowded, the scope of its monopoly should be interpreted restrictively to relate to identical tablets only.
The limitation falls easily from counsel's lips because Triomed's tablets are designed to be identical to
Beecham's, but
View Parallel Citation
the meaning of "substantially" and "identical" is not the same. It is not clear whether an objection based upon
(to borrow patent law terminology) "insufficiency" or "ambiguity" can properly be brought under section 10(1).
In any event, there can be no inherent objection to a trade mark registration relating to a substantially oval
and biconvex tablet. Whether such a mark is distinctive is another matter because, conceptually, the question
whether a mark is capable of distinguishing within the meaning of section 9 is an issue different, though not
always separate, from the one now under consideration. Since vagueness affects the distinctiveness of a mark,
Beecham may have to face the music if the trade mark is "insufficient" or "ambiguous".
[12] Triomed argued that the mark is not a trade mark because Beecham has not used it as such: Beecham at no
time promoted, marketed or sold Augmentin with reference to its shape; the package insert does not refer to
this trade mark but does refer to the Augmentin trade mark; no reference is made to the shape of the tablet in