Africa and a particular monopoly must as a matter of principle be justified in the public interest.
The meaning of "necessary to achieve a technical result" as used in section 10(5) of the Act should in my view be
determined by inquiring whether in substance the shape solely achieves a technical result. (See: Philips Electronics
BV v Remington Consumer Products (supra) at 308 lines 2050). On appeal in Philips Electronics BV v Remington
Consumer Products (supra) Aldous LJ made the following apposite remarks at 821 line 35 822 line 11:
"The subsection must be construed so that its ambit coincides with its purpose. That purpose is to exclude from
registration shapes which are merely functional in the sense that they are motivated by and are the result of technical
considerations. Those are the types of shapes which came from manufacture of patentable inventions. It is those types of
shapes which should not be monopolised for an unlimited period by reason of trade mark registration, thereby stifling
competition. Registrable trade marks are those which have some characteristic which is capable of and does denote
origin.
In my judgment the restriction upon registration imposed by the words 'which is necessary to obtain a technical result' is
not overcome by establishing that there are other shapes which can obtain the same technical result. All that has to be
shown is that the essential features of the shape are attributable only to the technical result. It is in that sense that the
shape is necessary to obtain the technical result. To adopt the meaning suggested by Philips will enable a trader or
traders to obtain registration of all the alternative shapes that
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were practicable to achieve the desired technical result. That would result in the subsection being given a meaning which
would not achieve the purpose for which I believe it was intended."
During argument on behalf of respondents Mr Puckrin pointed out that applicant's averments, to which I have
referred to hereinbefore, are in dispute. It is consequently necessary that I consider the facts relating to this issue.
At the outset it should be noted that the respondents delivered the affidavit of retired Professor JE Rees in
support of the evidence of Mr Shortt who deposed to an affidavit in the main application. Respondents indicated
that they intended calling Rees as a witness but failed to do so. Consequently, in my view, no weight should be
attached to the allegations in these affidavits where they are in conflict with the evidence of Van Oudtshoorn as
they are untested by crossexamination.
Van Oudtshoorn in giving evidence confirmed the evidence which is summarised hereinafter. The trade mark in
question has a standard dictionary defined elliptical shape, having a curvature and wall thickness, all of which are
dictated by function. The biconvex or biconcave shaped tablet facilitates the coating of the tablet with a polymer
film, which in turn aids swallowing or controls the release of the active ingredients while it is difficult to coat a flat
tablet. From a practical manufacturing perspective, the particular shape of the tablet is necessary for efficient film
coating. The "band" or wall thickness is the result of
View Parallel Citation
compression during the manufacturing process. If the "band" or wallthickness was not present or was too narrow
this would create a sharp edge to the tablet which would create a risk of chipping or crumbling during the process
of coating the tablet. The resistance to crumbling is known as "friability". The "band" or wall thickness is a functional
feature which is inherent in the nature of the tablet itself. The wall thickness also reduces wear on the punches
during the process of compression. The elliptical shape of the tablet is such that it is easy and safe to swallow,
particularly in large doses, and this characteristic is inherent in the nature of the tablet itself. The elliptical shape is
neither capricious nor arbitrary but serves a functional or utilitarian purpose. If the shape is dictated by patient
preference in the sense that the patient perceives the tablet in the particular shape as being easy to swallow, the
shape is intrinsic to the tablet and is primarily utilitarian or functional.
In view of this evidence I come to the conclusion that the trade mark in question is of a shape and configuration
which is essentially or primarily utilitarian and is superior in design. In my judgment a prohibition on the copying of
this shape will have the effect of inhibiting competition and in effect the first respondent seeks to create a monopoly
through trade mark law of a primarily or essentially utilitarian or functional shape. In my view this is not in
accordance with public policy.
The essential features of the trade mark in question are designed to achieve and do achieve a technical result
and the shape of the tablet is necessary to achieve the technical result. Accordingly, in my judgment, the trade mark
in question offends against the provisions of section 10(5) of the Act.
Section 10(11) of Act 194 of 1993
The last ground on which applicant relies to expunge the trade mark in question is to be found in the provisions of
section 10(11) of the Act. That section provides that the following is an unregistrable mark:
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"A mark which consists of a container for goods or the shape, configuration, colour or pattern of goods, where the
registration of such mark is or has become likely to limit the development of any art or industry."
Applicant's basis for this ground of expungement is that if the registration is not expunged, others will not be able
to use oval shaped tablets or similar tablets and parties such as the applicant will not be able to compete effectively
in the field because if they cannot use an oval shape their tablets will be less attractive, palatable and safe to
patients. In addition, it is contended that the shape of the tablet has competitive advantages which should be open