the shape, configuration, colour or pattern of goods where such shape, configuration, colour or pattern is necessary
to obtain a specific technical result, or results from the nature of the goods themselves. Nestlé's finger wafer shape
trademarks were found not to be solely shapes of goods which incorporated a technical solution.
That left, for the Court's consideration, Nestlé's application for interdictory relief. In terms of section 34(1)(a) of the
Act, Nestlé had to establish that Iffco had used the mark in respect of the same goods for which the trademarks
were registered which was either identical to, or so nearly resembled the registered trade mark, so as to be likely
to deceive or cause confusion. The mark was used in respect of the same goods, namely chocolate bars. The issue,
accordingly, was whether there was a likelihood of confusion or deception between the chocolate bars. In addition,
Nestlé had to establish that Iffco was using the finger wafer shapes themselves, or on the packaging of its
chocolate bar, as a badge of origin and not simply in a descriptive manner. The High Court's findings on that
question were found to be incorrect. It was held that the use by Iffco of the shape as depicted on its packaging and
its threedimensional form would be perceived by the consumer as a source identifier, that is, as a badge of origin,
of the goods as emanating from Nestlé. The court a quo,
Page 494 of [2015] 1 All SA 492 (SCA)
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.
Notes
For Trade Marks see:
·
LAWSA Second Edition Replacement Volume (Vol 29 paras 1294)
·
Burrell TD Burrells South African Patent and Design Law 3ed Durban LexisNexis 1999
Cases referred to in judgment
South Africa
Adcock Ingram Consumer Products Limited v Dhansooklal Jeenabhai
Mody t/a Black Magic [1997] 3 All SA 125 (T) Referred to
499
Adidas AG and another v Pepkor Retail Ltd [2013] JOL 30976 ([2013]
ZASCA 3) (SCA) Referred to
505
AM Moolla Group Ltd and others v The Gap Inc and others [2005] 4 All
SA 245 (2005 (6) SA 568) (SCA) Referred to
506
Bata Ltd v Face Fashions CC and another [2000] JOL 7458
(2001 (1) SA 844) (SCA) Confirmed
497
Beecham Group plc and another v Triomed (Pty) Ltd [2002] 4 All SA 193
(2003 (3) SA 639) (SCA) Referred to
496
Bernstein Manufacturing Co (1961) (Pvt) Ltd v Shepherdson [1968] 1 All
SA 167 (1968 (4) SA 386) (T) Referred to
499
Cowbell AG v ICS Holdings Ltd [2001] 4 All SA 242 (2001 (3) SA 941)
(SCA) Referred to
510
Die Bergkelder Bpk v Vredendal Koöp Wynmakery and others [2006] 4 All
SA 215 (2006 (4) SA 275) (SCA) Referred to
496
Laugh it Off Promotions CC v SAB International (Finance) BV t/a
Sabmark International and another 2005 (8) BCLR 743
(2006 (1) SA 144) (CC) Referred to
508
National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd [2001] JOL
8068 (2001 (3) SA 563) (SCA) Referred to
508
Plascon Evans Paints (Pty) Limited v Van Riebeeck Paints (Pty) Ltd
[1984] 2 All SA 366 (1984 (3) SA 623) (A) Confirmed
497
Puma AG Rudolf Dassler Sport v Global Warming (Pty) Ltd [2010] 1 All
SA 25 (2010 (2) SA 600) (SCA) Confirmed
497
Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd and others
[2011] 2 All SA 290 (SCA) Referred to
507
Reckitt and Colman SA (Pty) Limited v SC Johnson and Son SA (Pty)
Limited [1993] 1 All SA 27 (1993 (2) SA 307) (A) Referred to
505
Triomed (Pty) Ltd v Beecham Group plc and others [2001] 2 All SA 126
(2001 (2) SA 522) (T) Referred to
496
Turbek Trading CC v A and D Spitz Ltd and another [2010] 2 All SA 284
(SCA) Referred to
511
Verimark (Pty) Ltd v BMW AG; BMW AG v Verimark (Pty) Ltd [2007] JOL
19890 (2007 (6) SA 263) (SCA) Referred to
505
European Court of Justice
Koninklijke Philips Electronics NV v Remington Consumer Products Ltd,
18 June 2002 (ECJ) Referred to
Page 495 of [2015] 1 All SA 492 (SCA)
501