Schultz v Butt 1986 (3) SA 667 (A)
Standard Bank Investment Corporation v The Competition Commission and others [2000] 2 All SA 245 (A)
Stellenbosch Wine Trust Ltd and another v Oude Meester Group Ltd; Oude Meester Group Ltd v Stellenbosch Wine Trust
Ltd and another 1972 (3) SA 152 (C)
Thomas Marshall v Guinle [1978] 3 WLR 116
Germany
Dimple (1985) GRUR 550
Quick [1959] GRUR 182
United Kingdom
Baywatch Production Co Inc v The Home Video Channel [1997] FSR 22 (ChD)
British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (ChD)
Canon Kabushiki Kaisha v MetroGoldwynMayer lnc [1999] RPC 117 (ECJ) 133
Faccenda Chicken v Fowler [1986] 1 All ER 617 (CA)
Philips Electronics BV v Remington Consumer Products [1998] RPC 283 (ChD)
Philips Electronics BV v Remington Consumer Products Ltd [1999] RPC 809 (CA)
Premier Brands UK Ltd v Typhoon Europe Ltd and another [2000] All ER (D) 52
Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 [1963] 3 All ER 413
Taitinger SA v Allban BEP Ltd [1993] FSR 641
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Judgment
SMIT J
This application concerns the registration and alleged infringement, passingoff and unlawful competition of a trade
mark.
Page 130 of [2001] 2 All SA 126 (T)
First respondent is the registered proprietor of a trade mark registration number 95/13154, registered in class 5 in
respect of antibiotics. Applicant brought an urgent application to expunge the said trade mark. First respondent in
addition to opposing the relief sought by applicant brought a counterapplication in terms of which relief was sought
based on trade mark infringement, passingoff, copyright infringement and unlawful competition. First respondent
also joined third respondent as a coapplicant in reconvention in so far as it was alleged that third respondent too
has a claim against applicant based on unlawful competition.
View Parallel Citation
The first respondent is also the registered proprietor of the registered trade mark Augmentin, number 67/02550
registered in class 5 in respect of pharmaceutical preparations and substances. First respondent also claims
infringement by applicant of this mark.
The application was initially heard on 10 and 11 May 2000 but the main and counterapplication were referred for
the hearing of oral evidence. Professor van Oudtshoorn and Mr Malcolm Levy gave evidence at the hearing on
behalf of the applicant concerning the issues raised in the main application and the issues of alleged trade mark
infringement and passingoff in the counterapplication. The respondents tendered the evidence of Mr J de W Higgo
and Ms Maryanne Thom.
At the outset I should indicate that I had the advantage of wellconsidered arguments presented by Mr Bowman
and Mr Puckrin on behalf of the respective parties. In what follows hereinafter I shall make ample use of these
arguments.
Main application for expungement
In the main application an order is sought expunging trade mark 95/13154 in class 5 from the Register of Trade
Marks. The trade mark is registered in respect of antibiotics and "consists in the shape and curvature configuration
of a tablet substantially as shown in the representation". The representation indicates that the tablet has an
elliptical shape, a curvature which is biconvex and a band around its circumference. The trade mark was registered
with respect to all dimensions of the tablet and in all colours.
The applicant and the first respondent are trade competitors. The applicant is importing, distributing and selling
in South Africa a generic equivalent for an antibiotic which the first respondent sells under the trade mark
Augmentin. The first respondent's antibiotic is sold in tablet form and the tablets bear the shape depicted in the