regard to the Augmentin tablet and not to the trade mark in question as registered. The question put was not a
recognition of the trade mark as an antibiotic but it seems to me the only purpose of the survey was a recognition
of the fact that Augmentin is sold in large quantities. There is no evidence to indicate that if the interviewers were
shown the registered trade mark they would say it is Augmentin. It is not the Augmentin tablet that is the trade
mark but the trade mark in question is something wider than the Augmentin tablet. I consequently come to the
conclusion that the wrong question was posed and that the result of the survey does not provide evidence that the
trade mark in question had become capable of distinguishing through use.
Page 137 of [2001] 2 All SA 126 (T)
Section 10(1) of Act 194 of 1993
A further ground on which applicant relies for the expungement is to be found in the provisions of section 10(1) of
the Act. This section provides that "a mark which does not constitute a trade mark" shall be an unregistrable trade
mark.
In section 2(1) a trade mark is defined as meaning:
"a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the
goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services
connected in the course of trade with any other person."
In the same section a mark is defined as meaning
"any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape,
configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned."
Applicant contends that, in view of these statutory requirements, the trade mark in question does not constitute a
trade mark in so far as it has never fulfilled the function of a trade mark and does not fulfil that function.
In Canon Kabushiki Kaisha v MetroGoldwynMayer lnc [1999] RPC 117 (ECJ) 133 the function of a trade mark in
terms of the 1994 United Kingdom Act is set out in the following terms:
"the essential function of the trade mark is to guarantee the identity of the origin of the marked product to the consumer
or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which
have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition
which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated
under the control of the single undertaking which is responsible for their quality . . ."
In my view these terms are equally apt in so far as the South African Act is
View Parallel Citation
concerned save that the South African Act places a greater emphasis on the capacity of a mark to distinguish. In the
Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd case (supra) Harms JA stated at 777H:
"It cannot be in the public interest to have trade marks on the register that cannot perform the basic trade mark function
of distinguishing as set out in section 9(1)."
It is perhaps apposite at this stage to refer to that part of the judgment of Aldous LJ in the Philips Electronics BV v
Remington Consumer Products case to which I have already referred to hereinbefore. Although the learned judge is
dealing with the corresponding provisions of the UK Act the judgment is in my view equally applicable to the
provisions of section 10(1) of the South African Act and particularly apposite to the facts of the present case:
"I do not believe that the fact that a trade mark has by use become such as to denote goods of a particular trader
necessarily means that it is capable of distinguishing as required by section 1 (Article 2). I have already pointed out that
use is relevant when deciding registrability under section 3(1)(b), (c) and (d), but not under section 3(1)(a) [see Articles
3(1)(a), (b), (c) and 3(3)]. That suggests that the capability of distinguishing depends upon the features of the trade
mark itself, not on the result of its use. Thus a person who has had
Page 138 of [2001] 2 All SA 126 (T)
monopoly use of a trade mark for many years may be able to establish that it does in fact denote his goods exclusively,
but that does not mean that it has a feature which will distinguish his goods from those of a rival who comes into the
market. The more the trade mark describes the goods, whether it consists of a word or shape, the less likely it will be
capable of distinguishing those goods from similar goods of another trader. An example of a trade mark which is capable
of distinguishing is WELD MESH, whereas WELDED MESH would not be. The former, despite its primary descriptive
meaning, has sufficient capricious alteration to enable it to acquire a secondary meaning, thereby demonstrating that it is
capable of distinguishing. The latter has no such alteration. Whatever the extent of the use, whether or not it be
monopoly use and whether or not there is evidence that the trade and the public associate it with one person, it retains
its primary meaning, namely mesh that is welded. It does not have any feature which renders it capable of distinguishing
one trader's welded mesh from other trader's welded mesh.
Shapes such as shown in the trade mark are pictorial description of products. The test of registrability is the same for
such shapes as that for word marks. The trade mark shows the head of a particular three headed rotary shaver and it
would be recognised by the trade and public as such, albeit as one made by Philips. Even though there are a number of
other designs of three headed rotary shavers that could be produced, the shape shown in the trade mark is a shape
which, absent patent, registered design, copyright or unfair trading protection, another trader is entitled to make. It is not
capable of distinguishing Philips' shavers of that shape from those of other traders who produce shavers with a similar
shaped head. I believe that this is accepted by Philips; but they contend that such use of the shape by another trader is