unlawful in that it would result in infringement of a valid trade mark registration. But that submission avoids the question
of whether a picture of a threedimensional article which is purely descriptive of the article is registrable. In my view the
definition in the Act and the Directive prevents that happening. No doubt an application to register a picture of a reel of
cotton or a flag for coffee would succeed as they are not descriptive of the goods for which registration is sought: but
that does not mean that a shape of an article is registrable in respect of the article shown in the application, To so hold
would enable a few traders to obtain registration of all the
View Parallel Citation
best designs of an article and thereby monopolise those designs. In my view a shape of an article cannot be registered in
respect of goods of that shape unless it contains some addition to the shape of the article which has trade mark
significance. It is that addition which makes it capable of distinguishing the trade mark owner's goods from the same sort
of goods sold by another trader."
In the case of a mark consisting of a shape it must be of a distinctive character and not such as to enable certain
traders to acquire a monopoly in the most appropriate shapes for the goods concerned. A mark which is used to
acquire such a monopoly in the most appropriate shape for the product is, in my view, not being used for the
purposes of a trade mark and consequently does not constitute a trade mark. Van Oudtshoorn in his evidence
reiterated that the trade mark in question which simply depicts an elliptical, biconvex tablet with a band is not in
any way unique. In my view it has no qualities which can have trade mark significance.
Apart from this conclusion to which I have come it seems to me that the description of the trade mark in question
is also too vague for the mark to be
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represented graphically for the purpose of a valid registration. The mark as described has not been represented
graphically with sufficient certainty for the public to know the extent of the monopoly claimed. Although the actual
tablet depicted in the representation of the mark has been represented graphically, the registration itself extends
beyond what has been represented to a shape "substantially" as depicted. Such a description is not sufficiently
certain to be graphically represented for the purposes of a valid registration. The public are surely entitled to know
with sufficient certainty what the scope of the monopoly is. What is claimed cannot be represented graphically with
sufficient certainty to constitute a "mark" as required by section 10(1) of the Act.
In my view it has been established that first respondent is endeavouring, through trade mark registration, to
obtain a monopoly of a most appropriate shape for the tablet in question. The scope of the monopoly extends not
only to the shape as represented in the mark but any shape which is substantially of that shape. The tablet itself,
however, contains no additions to the shape of the article which have any trade mark significance. The mark has
not been able to function as, and has not served the purpose of, a trade mark.
Section 10(2)(b) of Act 194 of 1993
Applicant also relies on the provisions of section 10(2)(b) for the relief sought. This section precludes the
registration of marks which consist exclusively of a sign or an indication which may serve, in trade, to designate the
kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or
services, or the mode of time of production of the goods or of rendering of the services.
This section, it seems to me, seeks to preserve the rights of traders to use in trade what may be termed the
noncapricious features of the article in question. The elements of the trade mark in question are not capricious but
are generic qualities of the tablet. This is evidenced by the fact that such features are in use in the trade by other
manufacturers.
Respondents submitted that there is no basis whatsoever for suggesting
View Parallel Citation
that the shape in question consists exclusively of an indication of the kind, quality, quantity, intended purpose,
value, geographical origin or other characteristics or method or time of production of the goods in question.
The evidence however, indicates that the trade mark in question consists of a tablet which has particular
characteristics in relation to its shape and configuration. The characteristics are that it is elliptical, biconvex and has
a band around its circumference. The mark itself consists of a twodimensional reproduction of aspects of a three
dimensional article. The shape and configuration simply denote the kind of tablet or the quality of the tablet or the
characteristics inherent in the tablet. Consequently in my view the shape in question does consist exclusively of an
indication as required by section 10(2)(b).
Where the mark offends prima facie against the provisions of section 10(2)(b) "compelling evidence" is required to
establish distinctiveness. In this regard use is not to be equated with distinctiveness and the use must have been
trade mark use and have resulted in the mark having developed a secondary meaning which renders it capable of
distinguishing. See British Sugar plc v James Robertson & Sons Ltd (supra) at 302 and 306.
I am not persuaded that such evidence was forthcoming. The mark consists exclusively of an indication of the
kind of goods for which the mark was registered and
Page 140 of [2001] 2 All SA 126 (T)