swallowing, coating and the prevention of crumbling. The fact that other shapes may also attain these results
is, as we have seen, beside the point. It follows that the choice of this shape provides a reasonable technical
solution to a problem and that the registration of the mark was consequently contrary to the provisions of
section 10(5) and also (11) because the registration of the shape is likely to limit the development of the
relevant art.
Page 205 of [2002] 4 All SA 193 (SCA)
[31] The appeal is dismissed with costs, including the costs of two counsel.
For the appellant:
CE Puckrin SC and JN Cullabine instructed by DM Kisch Incorporated, Sandton
Correspondents for the appellant:
Naudés, Bloemfontein
For the respondent:
L Bowman SC and GE Morley instructed by Spoor & Fisher, Pretoria
Correspondents for the respondent:
Israel & Sackstein, Bloemfontein
Footnotes
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It is unnecessary to distinguish between the appellants and I will conjoin them under the name "Beecham".
Biotech Laboratories (Pty) Ltd v Beecham Group plc and another 2002 (4) SA 249 (SCA).
Triomed (Pty) Ltd v Beecham Group plc and others 2001 (2) SA 522 (T).
Philips Electronics BV v Remington Consumer Products [1998] RPC 283 310 (I will refer to this judgment as Philips I).
C f Dexion Europe Ltd v Universal Storage Systems (Pty) Ltd 6 September 2002 Case 500/2000 (SCA) unreported.
(Reported at [2002] 4 All SA 67 (SCA) Ed.)
Agriplas (Pty) Ltd v Andrag & Sons (Pty) Ltd 1981 (4) SA 873 (C).
Trade Marks Act 194 of 1993 s 24(1).
At 532CD, 533DE and 538C539B.
Delivered on 18 June 2002. The judgments of the ECJ can be found at http://www.curia.eu.int.
To be found at http://oami.eu.int/en/aspects/direc/direc.htm. The important provisions of the directive relevant to this case
are quoted:
Art 2: "A trade mark may consist of any sign capable of being represented graphically, particularly words, including
personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are
capable of distinguishing the goods or services of one undertaking from those of other undertakings."
Art 3 (1): "The following shall not be registered or if registered shall be liable to be declared invalid:
a. signs which cannot constitute a trade mark;
b. trade marks which are devoid of any distinctive character;
c. trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind,
quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of
rendering of the service, or other characteristics of the goods;
d. trade marks which consist exclusively of signs or indications which have become customary in the current
language or in the bona fide and established practices of the trade;
e. signs which consist exclusively of:
· the shape which results from the nature of the goods themselves, or
· the shape of goods which is necessary to obtain a technical result, or
· the shape which gives substantial value to the goods . . . ."
Tony Martino Trademark Dilution (Oxford University Press, 1996).
Cf Valentino Globe BV v Phillips and another 1998 (3) SA 775 (SCA) at 782IJ (also reported at [1998] 4 All SA 1 (SCA)
Ed). Canon Kabushiki Kaisha v MetroGoldwynMayer Inc [1999] RPC 117 (ECJ) para 28: 'Moreover, according to the
settled caselaw of the Court, the essential function of the trade mark is to guarantee the identity of the origin of the
marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product
or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of
undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing
it have originated under the control of a single undertaking which is responsible for their quality (see, in particular, Case C
10/89 HAG GF (HAG II) [1990] ECR I3711, paragraphs 14 and 13).'
Beecham more recently introduced a 1000mg tablet, which, it alleges, has a shape different from the registered trade
mark. Save for a break line, it seems to me to be substantially oval and biconvex. If it is different, one wonders why
Beecham wishes to sell Augmentin in two shapes if the shape performs a trade mark function.
Cf in a passingoff context Roche Products Ltd and another v Berk Pharmaceuticals Ltd [1973] RPC 473 (CA) at 484 line 14
19.
Cf Canon para 28 quoted earlier.
At 817818 cited by Smit J at 538C539B.
British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281 (Ch D) 305306.
The facts in AdcockIngram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W) at 437438 provide a good
illustration of the same point in the context of passingoff at a stage when shapes were not eligible for trade mark
registration.
This distinguishes Luster Products Inc v Magic Style Sales CC 1997 (3) SA 13 (A) at 22A26D (also reported at [1997] 1 All
SA 327 (A) Ed).
University of London Press Ltd v Universal Tutorial Press Ltd [1916] 2 Ch 601 at 610 quoted in Payen Components SA Ltd v
Bovic CC and another 1995 (4) SA 441 (A) 452DE.
C f Taylor & Horne (Pty) Ltd v Dentall (Pty) Ltd 1991 (1) SA 412 (A) at 422BE; Cadbury (Pty) Ltd v Beacon Sweets &
Chocolates (Pty) Ltd and another 2000 (2) SA 771 (SCA) at 781BC (also reported at [2000] 2 All SA 1 (SCA) Ed).