pharmaceutical tablets (including antibiotics) on the market with the identical or substantially identical shape,
albeit not necessarily with the same size as Augmentin. I realise that some of these were introduced after
registration, but others were not. Both categories are admissible to decide whether, since the application date,
the mark through use has become capable of distinguishing under the proviso to section 10.19
[25] This conclusion is consistent with the answer to the third question in Philips III par 65:
"[W]here a trader has been the only supplier of particular goods to the market, extensive use of a sign which
consists of the shape of those goods may be sufficient to give the sign a distinctive character for the purposes of
Article 3(3) of the Directive in circumstances where, as a result of that use, a substantial proportion of the relevant
class of persons associates that shape with that trader and no other undertaking or believes that goods of that
shape come from that trader. However, it is for the national court to verify that the circumstances in which the
requirement under that provision is satisfied are shown to exist on the basis of specific and reliable data, that the
presumed expectations of an average consumer of the category of goods or services in question, who is
reasonably wellinformed and reasonably observant and circumspect, are taken into account and that the
identification, by the relevant class of persons, of the product as originating from a given undertaking is as a result
of the use of the mark as a trade mark."
(Emphasis added.)
[26] Finally on this point Beecham fell back on the aphorism "what is worth copying is prima facie worth
protecting",20 submitting that Triomed's supplier's conscious copying of the Augmentin tablet's form indicates
that the form must have trade mark value. Aphorisms can be dangerous and in any event, it requires some
genetic engineering in order to adapt an aphorism applicable to a particular copyright problem to trade mark
law. It would negate one of the foundations of the free market system.21
[27] Does the mark in terms of section 10(5) consist exclusively of the shape of goods
View Parallel Citation
where such shape is necessary to obtain a specific technical result? The mark no doubt consists exclusively of the
shape of a tablet and the remaining issue is whether the shape is necessary to obtain a specific technical
result. This raised two questions in Philips II: First, does this mean that such a sign falls foul of section 10(5) if
the essential functional features of the shape are attributable only to the technical result, and, second, does
section 10(5) apply if there are other shapes which can obtain the same technical result?
Page 204 of [2002] 4 All SA 193 (SCA)
[28] Philips III gave the answer in these terms (paragraph 84):
"[The provision] must be interpreted to mean that a sign consisting exclusively of the shape of a product is
unregistrable by virtue thereof if it is established that the essential functional features of that shape are
attributable only to the technical result. Moreover, the ground for refusal or invalidity of registration imposed by
that provision cannot be overcome by establishing that there are other shapes which allow the same technical
result to be obtained."
The ECJ reasoned that the various grounds for refusal of registration must be interpreted in the light of the public
interest underlying each of them (paragraph 77) and that the rationale underlying (amongst other) this ground
(paragraph 78)
"is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional
characteristics of a product which a user is likely to seek in the products of competitors. Article 3(1)(e) [of the
Directive, which includes the ground under consideration] is thus intended to prevent the protection conferred by
the trade mark right from being extended, beyond signs which serve to distinguish a product or service from those
offered by competitors, so as to form an obstacle preventing competitors from freely offering for sale products
incorporating such technical solutions or functional characteristics in competition with the proprietor of the trade
mark."
(Emphasis added.) The intention underlying this particular ground is (paragraph 79)
"to preclude the registration of shapes whose essential characteristics perform a technical function, with the result
that the exclusivity inherent in the trade mark right would limit the possibility of competitors supplying a product
incorporating such a function or at least limit their freedom of choice in regard to the technical solution they wish
to adopt in order to incorporate such a function in their product."
[29] The evidence establishes that the oval shape is important for the ease and safety of swallowing especially
larger tablets. Patients do not readily accept large round tablets. A recent press release by Schering
Laboratories deals with a problem patients experienced swallowing roundshaped tablets. Many of them
required medical assistance to remove the tablet. Schering in consequence developed a new ovalshaped
tablet "more similar in size, shape and coating to a variety of other medications that have been used safely
around the world." The biconcave shape facilitates the coating of the tablet and the "band" (the area
between the two convexities) prevents the tablet from crumbling.
[30] Beecham nevertheless argued that section 10(5) does not apply to the facts under consideration because the
function of the tablet is to act as an antibiotic and that the shape of the tablet has nothing to do with curing
View Parallel Citation
infections. The argument is without any merit. The provision is concerned with the question of whether the
registered shape is necessary to obtain a specific technical result. Shape, in this case, is necessary for ease of