[68] In addition, during this period in 2008 the parties litigated over the identical trade mark issues, with Nestlé
instituting legal proceedings against Iffco in Iffco's country of domicile being the United Arab Emirates. From
2008 a number of meetings were held between the parties to settle their dispute on a global scale.
[69] On a conspectus of all of the evidence I am satisfied that Iffco was never led to believe that Nestlé would not
enforce the contested trade marks in South Africa against Iffco. The conduct of Nestlé never unequivocally
indicated a waiver of the rights it held in the contested trade marks, nor did it amount to a representation
that action would not be taken against Iffco to enforce these rights.
Page 512 of [2015] 1 All SA 492 (SCA)
[70] These defences were not dealt with by the court a quo, finding it unnecessary to do so because of the
dismissal of Nestlé's application on the basis that it had failed to prove infringement of its trade marks. For the
reasons set out above, these defences must fail and Nestlé is, accordingly, entitled to the interdictory relief
referred to above.
[71] The following order is made:
1.
The appeal by the first and second appellants against the order of the court a quo dismissing the
appellants' application with costs, succeeds with costs, to the extent reflected in the following order:
"The first respondent and the second respondent are interdicted from infringing the rights of the first applicant
in trade mark registration numbers 1999/23579 4 finger wafer shape and 1999/23580 2 finger wafer shape by
making unauthorised use, in the course of trade, in relation to chocolate and/or confectionary products of any
finger wafer shape mark of any of the types referred to in paragraph 11 of the founding affidavit of Kevin
Corlett and illustrated in annexures 'N17A' to 'N17E' thereto, and of any depictions of any such finger wafer
shapes on the packaging or labelling of such products, or of any finger wafer shapes which are confusingly
and/or deceptively similar to the aforesaid registered trade marks of the first applicant.
The first and second respondents are ordered to pay the first and second applicants' costs."
2.
The crossappeal by the first and second respondents against the dismissal of the respondents'
counterapplication and second review application with costs, is dismissed with costs.
3.
The costs orders are to include the costs of two Counsel.
(Navsa ADP, Theron, Zondi JJA and Dambuza AJA concurred in the judgment of Swain JA.)
For the appellant:
C Puckrin SC and GD Marriot instructed by Adams & Adams Incorporated, Pretoria and Honey Attorneys Incorporated,
Bloemfontein
For the respondents:
R Michau S C a n d LG Kilmartin instructed by Goldman Judin Incorporated, I l l o v o a n d Rossouws and Conradie
Incorporated, Bloemfontein
Footnotes
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This Court has recognised that the shapes of goods may perform a trade mark function. Beecham Group plc and
another v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA) [also reported at [2002] 4 All SA 193 (SCA) Ed]; Die Bergkelder
Bpk v Vredendal Koöp Wynmakery and others 2006 (4) SA 275 (SCA) [also reported at [2006] 4 All SA 215 (SCA)
Ed].
Triomed (Pty) Ltd v Beecham Group plc and others 2001 (2) SA 522 (T) at 539DF [also reported at [2001] 2 All SA 126
(T) Ed].
Plascon Evans Paints (Pty) Limited v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 640641 [also reported at
[1984] 2 All SA 366 (A) Ed]; Bata Ltd v Face Fashions CC and another 2001 (1) SA 844 (SCA) para [9] [also reported
at [2000] JOL 7458 (SCA) Ed]; Puma AG Rudolf Dassler Sport v Global Warming (Pty) Ltd 2010 (2) SA 600 (SCA)
paras [8][9] [also reported at [2010] 1 All SA 25 (SCA) Ed].
GC Webster, NS Page, CE Webster, GE Morley South African Law of Trade Marks (2013) at 8.25.
Bernstein Manufacturing Co (1961) (Pvt) Ltd v Shepherdson 1968 (4) SA 386 (T) at 389H [also reported at [1968] 1 All
SA 167 (T) Ed]; Adcock Ingram Consumer Products Limited v Dhansooklal Jeenabhai Mody t/a Black Magic [1997] 3
All SA 125 (T).
Companies and Intellectual Property Registration Office: Guidelines in the examination of trade mark applications.
Supra para 8.25.
Supra para 8.25.
Beecham supra para [30].
Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (para [84]) quoted with approval in Beecham,
supra para [28].
Paras [104][107].
Para [108].
Para [81].
Beecham, supra para [28] quoting Philips para [78].
Verimark (Pty) Ltd v BMW AG; BMW AG v Verimark (Pty) Ltd 2007 (6) SA 263 (SCA) para [5] [also reported at [2007]
JOL 19890 (SCA) Ed].
Verimark para [7].
Verimark para [9].
Reckitt and Colman SA (Pty) Limited v SC Johnson and Son SA (Pty) Limited 1993 (2) SA 307 (A) at 316I [also reported
at [1993] 1 All SA 27 (A) Ed].
Adidas AG and another v Pepkor Retail Ltd [2013] ZASCA 3 (28 February 2013) para [27] [reported at [2013] JOL
30976 (SCA) Ed].
AM Moolla Group Ltd and others v The Gap Inc and others 2005 (6) SA 568 (SCA) at 582EG [also reported at [2005] 4