wafer shape trade marks. Having already established that its trade mark is wellknown in South Africa and
that Iffco is using a trade mark which is identical or similar to this registered trade mark, Nestlé, for the
purposes of this section, had to establish that Iffco's shape of its Break chocolate bars, is likely to take unfair
Page 508 of [2015] 1 All SA 492 (SCA)
advantage of, or be detrimental to, the distinctive character or the repute of the registered 4 finger wafer
shape and 2 finger wafer shape trade marks.24
[50] The section:
"aims to protect the commercial value that attaches to the reputation of a trade mark, rather than its capacity to
distinguish the goods or services of the proprietor from those of others . . . That being so, the nature of the goods or
services in relation to which the offending mark is used, is immaterial, and it is also immaterial that the offending
mark does not confuse or deceive."25
[51] The protection of section 34(i)(c) extends beyond the primary function of a trade mark which is to signify the
origin of goods or services. It strives to protect the unique identity and reputation of a registered trade mark
which sells the goods. Its object it to avoid "blurring" and "tarnishment" of the trade mark.26
[52] The advantage or detriment complained of must be of a sufficiently significant degree to restrain the use of
the trade mark.27 The court must be satisfied by evidence of actual detriment, or of unfair advantage, but
depending on the primary facts, these may be selfevident.28 I agree with the submission by Nestlé that as
the sales of Iffco's Break chocolate bars increase consumers will associate Nestlé's registered finger wafer
shape with the product of Iffco, or as the shape of a chocolate bar sold by a number of proprietors in South
Africa. The loss of the unique shape of Nestlé's Kit Kat bar as a distinctive attribute will inevitably result in a
loss of advertising or selling power to Nestlé. This will clearly result in "blurring" of Nestlé's finger wafer shape
trade mark. In addition, because Nestlé and Iffco are direct competitors, increased sales of Iffco's Break
chocolate bars will be at the expense of Nestlé's Kit Kat chocolate bar. Economic harm to Nestlé is
consequently selfevident from the primary facts.
[53] The court a quo, accordingly, erred in concluding that Nestlé had failed to prove an infringement of the
registered finger wafer trade marks in terms of section 34(1)(c) of the Act. Whether Nestlé is entitled to
interdictory relief in this regard again must await a consideration of the special defences raised by Iffco as
referred to above.
Nestlé's application for interdictory relief based upon Iffco's use of the "Break" trade mark in contravention of
Nestlé's word trade marks
[54] Counsel for Nestlé conceded at the hearing that if Nestlé was successful in interdicting the use by Iffco of
Nestlé's 4 finger and 2 finger wafer
Page 509 of [2015] 1 All SA 492 (SCA)
shape marks, there would be no practical need to interdict the use by Iffco of the "Break" word mark.
However, Counsel for Iffco submitted that the resolution of the dispute concerning the shape marks would not
be dispositive of the dispute concerning the use by Iffco of the "Break" word mark. The issue required
determination in the appeal.
[55] A determination of whether Iffco's "Quanta Break" and "Tiffany Break" word trade marks, contravene Nestlé's
word trade marks must be carried out without regard to the finding that the shape of Iffco's chocolate finger
wafer bars to which the name "Break" is attached, is confusingly or deceptively similar to Nestlé's 4 finger and
2 finger wafer shape marks. This is because the comparison is between the respective word marks of Nestlé
and Iffco and not between the respective word marks viewed in conjunction with the shape of the products
which they name.
[56] The registered word trade marks of Nestlé are the following:
Have a Break, Have a Kit Kat
Have a Break . . . Have a Kit Kat
Have a Break
Take a Break
All of these marks, except for "Have a Break, Have a Kit Kat" are endorsed with disclaimers on the word
"Break". Counsel for Nestlé in their heads of argument, accordingly, rely solely on the mark not subject to the
disclaimer, namely "Have a Break, Have a Kit Kat."
[57] The registered word trade marks of Iffco are "Quanta Break" and "Tiffany Break", but it is clear that Iffco uses
the word "Break" on its packaging as a trade mark. By virtue of the fact that Nestlé relies upon the provisions
of section 34(1)(a) of the Act, it has to be determined by comparing the mark of Nestlé relied upon, namely
"Have a Break, Have a Kit Kat", with the mark of Iffco namely, "Break" whether there is a likelihood that
consumers would be deceived or confused into believing that Iffco's product is a Nestlé product, or that there
was a material connection between them.
[58] Of significance in this enquiry is the fact that Nestlé has disclaimed use of the word "Break" in three out of the
four registered word marks. Why it has not been disclaimed in the remaining word mark relied upon by Nestlé
is not explained. There is certainly nothing in the word mark relied upon to distinguish it in this regard from
the other word marks. It is clear that a disclaimer allows others to use disclaimed features in a trade mark