occurs where unfavourable associations are created between the wellknown registered mark and the mark of the
defendant. It is an impairment of the wellknown marks capacity to stimulate the desire to buy. (See: Premier Bands
case (supra) at page 14).
Respondents do not suggest that Augmaxcil will be recognised by medical practitioners and pharmacists as
anything other than a generic equivalent of
Page 156 of [2001] 2 All SA 126 (T)
amoxcycillin/clavulanic acid. Consequently this cannot have the effect of diluting or blurring the distinctive nature of
the trade mark Augmentin or tarnishing its repute. Augmaxcil, to my mind, will not be associated with Augmentin
and amongst doctors and pharmacists will only be recognised for what it is. Absent any deception or confusion,
there cannot be any association between the two marks. The goodwill, reputation and distinctiveness which
Augmentin may have will be unaffected by the applicant's sale of a generic equivalent under the trade mark
Augmaxcil. The applicant's tablet for its Augmaxcil antibiotic is not used in any trade mark sense whereby it could
take any advantage of any reputation which may be found to attach to the shape of first respondent's trade mark.
There is no blurring and the method by which Augmaxcil is prescribed, dispensed and administered, solely with
reference to the word trade mark means that there cannot be any tarnishing or detriment to mark 95/13 154.
I could find no evidence to indicate the extent to which the shape of the Augmentin tablet is known amongst
doctors. They would only be interested in the therapeutic qualities of Augmentin, its generic composition and the
word trade mark itself. There is no evidence that doctors prescribe with reference to the shape of the tablet in any
trade mark sense. The evidence does disclose that the shape depicted in the word trade mark is inherently non
distinctive and has in practice always been used with the trade mark Augmentin. The trade mark Augmentin is the
distinctive sign and the shape depicted in the shape trade mark has not come to be regarded as a second trade
mark capable by itself of distinguishing the first respondent's antibiotics. In my judgment the evidence does not
disclose that there is a reputation in the shape of the tablet excluding the word trade mark.
I consequently come to the conclusion that the first respondent has failed to show an infringement of either of
the registered marks in terms of the provisions of section 34(1)(c) of the Act.
View Parallel Citation
Section 35 of Act 194 of 1993
The relief sought by respondents in terms of the provisions of section 35 of the Act reads as follows:
"Interdicting and restraining the Applicant��from using, in the Republic of South Africa, the trade mark Augmaxil, (sic)
or the shape and configuration of trade mark registration numbers 67/2550 (sic) and/or 95/13154, or any deceptively
or confusingly similar marks or any other trade marks which constitute or the essential part of which constitutes a
reproduction or imitation of the First Respondent's registered trade marks numbers 67/2550 (sic) and/or 95/13154 in
terms of the provisions of section 35 of the Act."
Respondents merely contended that both marks are wellknown marks in the Republic of South Africa in terms of
the provisions of section 35 of the Act and that applicant should be held to have infringed the marks on this basis.
In respondents' answering affidavit no attempt is made to establish a case in terms of the provisions of this section.
Given the nature of the relief sought there is no room for the application of section 35 of the Act and there is, in
my view, no possible basis on which relief in terms of the provisions of this section could be granted.
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Unlawful competition
The relief sought by respondents relating to unlawful competition reads as follows:
"Interdicting and restraining the Applicant from selling its product Augmaxil (sic) or any equivalent or similar product
for a period of 6 months from the date upon which it commenced selling the aforesaid product as a consequence of its
unlawful use of the selling or marketing manual referred to above."
The question of the norm to be applied in establishing what constitutes unlawful competition has been fully dealt
with in the judgment of Van Dijkhorst J in the case of Atlas Organic Fertilisers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd
and others 1981 (2) SA 173 (T) at 186189. In Lorimar Productions Inc and others v Sterling Clothing Manufacturers
(Pty) Ltd 1981 (3) SA 1129 (T) the same learned Judge summed up the test as follows at 1152H1153A:
"As stated in Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and others 1981 (2) SA 173 (T) at 188,
the norm to be applied is the objective one of public policy. This is the general sense of justice of the community, the
boni mores, manifested in public opinion. In determining and applying this norm in a particular case the interests of
the competing parties have to be weighed, bearing in mind also the interests of society. The business ethics of that
section of the community where the norm is to be applied are of major importance in its determination. One should
further bear in mind that the boni mores are not universally the same. The general sense of justice may differ from
community to community."
In the Appellate Division decision in Schultz v Butt 1986 (3) SA 667 (A), Nicholas AJA stated the applicable principles
as follows at 678F679F: