to all in the market place.
Functional features of shape are, in terms of the common law, not protected by way of a passingoff action. (See:
Agriplas (Pty) Ltd v Andrag and Sons (Pty) Ltd (supra)). Section 34(2)(e) of the Act also reflects this approach and
provides that a registered trade mark is not infringed by the bona fide use by any person of any utilitarian features
embodied in a container, shape, configuration, colour or pattern which is registered as a trade mark.
View Parallel Citation
Under the law pertaining to competition generally where statutory protection can be claimed but is not or where
statutory protection expires or is lost, anyone is free to copy which is legitimate activity. (See: Premier Hangers CC v
Polyoak (Pty) Ltd (supra) at 423DE).
This whole approach seems to indicate that technological advance is not to be inhibited by means of the law
pertaining to trade marks, and such advance can only take place in an economic environment where undue
restrictions or burdens are not placed on legitimate competition. It seems to me that legitimate competition is
inhibited where one competitor is precluded from taking advantage of characteristics which are inherent in the
goods whether aesthetic or functional and which give substantial value to the goods themselves.
In my judgment the trade mark in question offends against the provisions of section 10(11) as a monopoly in the
shape in question would clearly limit developments in the pharmaceutical industry. In this regard Van Oudtshoorn
testified that in his opinion the trade mark in question if upheld would inhibit the expansion of the market where a
choice of an elliptical shape is concerned. It would grant a monopoly on features of shape which give substantial
value to the goods themselves. The more functional a shape, the more likely it is or will become that a monopoly
over that shape would be likely to limit the development of an industry. A primarily utilitarian shape such as that of
the trade mark in question, registered for all dimensions of the tablet in question, cannot be denied to other
pharmaceutical manufacturers without inhibiting competition and preventing manufacturers of pharmaceutical
tablets from using a shape of tablet which they would reasonably wish to use.
It seems to me that the trade mark in question is reasonably required for use in the pharmaceutical trade and
this is another indication that a monopoly over that shape would inhibit the pharmaceutical industry. The relevant
evidence indicates that factors such as patient preference and the safety need to use a tablet of the shape
depicted in the trade mark in question are objective indications that to allow the first respondent to monopolise the
shape would limit the development of the pharmaceutical industry and would stifle competition in the industry.
The monopolisation of a shape is likely to limit the development of an art or industry where there is reasonably a
competitive need to use the specific shape
Page 144 of [2001] 2 All SA 126 (T)
or configuration concerned. If competitors reasonably require the use of the specific shape in question, then
granting a monopoly in that shape will, in my view, in terms of section 10(11) be likely to limit the development of
the industry concerned, in this case the pharmaceutical industry. I consequently come to the conclusion that the
trade mark in question offends against the provisions of section 10(11) of the Act.
In view of the findings to which I have come as hereinbefore set out and after considering the cumulative effect
of the various grounds on which the expungement of the trade mark in question is sought I am convinced that the
entry in the trade mark register relating to trade mark registration number 95/13154 was wrongly made in or is
wrongly remaining on the register.
View Parallel Citation
Respondent's counterapplication
I now turn to consider the relief sought in the counterapplication. By agreement between the parties I made an
order interdicting and restraining the applicant from infringing the first respondent's copyright in its package inserts
and ordered applicant to pay the costs of suit in so far as the copyright claim is concerned including the costs of two
counsel. That order consequently disposed of the relief set out in paragraph 214.6 of the first respondent's counter
claim. During argument I was also informed that the relief sought in paragraphs 214.5, 214.8 and 214.9 is either
abandoned or falls away and needs no further consideration.
Respondents' grounds for trade mark infringement
As far as the relief relating to trade mark infringement is concerned first respondent relies on the provisions of
sections 34(1)(a), 34(1)(c) and 35(3) of the Act. These sections provide as follows:
"34
(1)
The rights acquired by registration of a trade mark shall be infringed by
(a)
the unauthorized use in the course of trade in relation to goods or services in respect of which the
trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely
to deceive or cause confusion;
(b)
.
(c)
the unauthorized use in the course of trade in relation to any goods or services of a mark which is
identical or similar to a trade mark registered, if such trade mark is well known in the Republic
and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the