the quality, characteristics and intended purpose of those goods. In my view there is a lack of compelling evidence
that the interested public, including doctors, pharmacists and patients regard the shape in all its dimensions as
being a trade mark of the first respondent and not simply as the goods themselves.
Section 10(2)(c) of Act 194 of 1993
A further ground for applicant's application to expunge is to be found in the provisions of section 10(2)(c) of the Act.
This section precludes the registration of a mark which "consists exclusively of a sign or an indication which has
become customary in the current language or in the bona fide and established practises of the trade".
Applicant contends that the trade mark in question is a sign or indication which has become customary in the
current language or the bona fide and established practices in the trade and that use of this particular shape is
bona fide and established. These contentions of applicant are disputed by respondents. The issues here to be
decided are very much bound up with the question of the inherent capacity to distinguish and acquired
distinctiveness of the mark.
From the evidence, however, it appears clearly in my view that the elliptical shape of tablet was first adopted by
Eli Lilly from about 1975. It was thereafter adopted for pharmaceutical tablets including antibiotics by other
pharmaceutical manufacturers and there has been no suggestion that their adoption of the shape and configuration
was anything more than the bona fide adoption of a customary shape. Van Oudtshoorn's evidence establishes the
bona fide customary use by a number of pharmaceutical manufacturers of tablets in the shape of the
View Parallel Citation
trade mark in question. It is a shape in respect of which punches and dies may readily be purchased from die
manufacturers. Elliptical or oval shaped tablets are referred to in standard reference works. A scientific study has
indicated a patient preference for an oval shape of tablet and there has been at least one instance in which a
manufacturer has converted to an oval or elliptically shaped tablet because of safety considerations.
Certain of respondents' witnesses allege that the shape is "unique" or "peculiar". These witnesses, however, do
not deal at all with other pharmaceutical tablets on the market of the same or very similar shape or configuration.
To the extent that their evidence is in conflict with the oral evidence of Van Oudtshoorn who testified that the trade
mark in question is not unique, I accept the evidence of Van Oudtshoorn.
I am accordingly satisfied that the trade mark in question offends against the provisions of section 10(2)(c) of the
Act.
Section 10(5) of Act 194 of 1993
Applicant relies heavily on the provisions of section 10(5) of the Act as a ground for the relief sought. Section 10(5)
provides:
"a mark which consists exclusively of the shape, configuration, colour or pattern of goods where such shape,
configuration, colour or pattern is necessary to obtain a specific technical result, or results from the nature of the goods
themselves . . . shall be liable to be removed from the register."
In its founding affidavit applicant avers:
". . . that the First Respondent's mark consists exclusively of the shape or configuration of goods where such shape, or
configuration, is necessary to obtain a specific technical result, or results from the nature of the goods themselves . . .
Page 141 of [2001] 2 All SA 126 (T)
. An oval shaped tablet is necessary to obtain the technical result that the tablet can be safely swallowed, particularly in
the case of larger dosages where, for example, a round tablet would be difficult to swallow safely."
The trade mark in question consists exclusively of the shape and configuration of a pharmaceutical tablet as
depicted in the mark and it is registered for all dimensions of the shape and configuration concerned. Consequently
it matters not that the technical result may not be a consideration for all the dimensions of the shape and
configuration, as long as the shape itself is necessary to achieve a technical result for certain dimensions of the
tablet.
The exclusion provided for in section 10(5) has its genesis in the principle which pervades trade mark law that a
balance should be preserved between the protection of the right of a manufacturer or merchant to identify his
goods and distinguish them from those manufactured or sold by others and the recognition of the general right of
free competition, including the right to copy. (See: Cointreau et cie v SA Pagan International 1991 (4) SA 706 (A) at
712EF; and see Premier Hangers CC v Polyoak (Pty) Ltd5 1997 (1) SA 416 (A) at 423D424I).
This principle also finds expression in the common law principle that as a matter of public policy features of an
article dictated solely by function are not protected by an action of passing off. (See: Agriplas (Pty) Ltd and others v
Andrag & Sons (Pty) Ltd 1981 (4) SA 873 (C) at 882A884H).
View Parallel Citation
If these principles were not applied it would be open to a single competitor or a few competitors to monopolise all
the best or most appropriate functional features for an article and so inhibit or prevent competition. Artificial barriers
to free competition are precluded by laws relating to competition in most free market economics including South