[11] Nestlé contended that the relevant trade marks were applied for as shape marks and that this is visually
apparent from the representations of the marks that were filed with the application forms TM1 on 21
December 1999. Nestlé submitted that Iffco is wrong in its assertion that it applied for twodimensional device
marks. On 18 January 2000, Nestlé applied for an endorsement to be entered against both the 2 finger and
the 4 finger wafer shape trade mark applications reading as follows:
"The mark consists of the distinctive shape or appearance of the goods."
Nestlé argued that the endorsement simply clarified and confirmed the monopoly in which it was seeking
rights, whereas Iffco contended that by entering the endorsement the relevant trade marks were
transformed from device marks, into marks consisting of the shape of goods.
Page 497 of [2015] 1 All SA 492 (SCA)
[12] Counsel were in agreement that the interpretation of a trade mark application must be made objectively and
through the eyes of an ordinary consumer in the same way as the infringement of a trade mark is determined.
That test requires a court to compare the registered trade mark and the allegedly infringing mark through the
eyes of the ordinary consumer, both sidebyside and apart and determine, whether as a matter of global first
impression there exists a likelihood of deception or confusion.3 This must be so because if the comparison is
to be made objectively and through the eyes of the ordinary consumer, the interpretation of the trade mark
allegedly infringed must be conducted in the same manner. Consequently, the subjective intention of the
applicant for the mark sought to be registered is irrelevant. The interpretation of the mark is to be decided by
the court and the views of expert witnesses as to how the mark would be perceived by the ordinary
consumer is, accordingly, irrelevant. In this regard the views of Dr Dean, Mr Stewart and Mr Bouwer whose
evidence was relied upon by the parties is, therefore, irrelevant.
[13] In my view on the facts of this case the representations of the marks as contained in the application by Nestlé
for registration as trade marks, viewed objectively through the eyes of the notional ordinary consumer, would
be perceived as twodimensional depictions of threedimensional shapes and not twodimensional devices for
the following reasons. It is clear that the chocolate bars in question have been marketed and sold in South
Africa under the name Kit Kat, in the shape depicted in the applications for registration, for the last 50 years.
In addition, it is clear that Nestlé has also for a considerable period of time made extensive use of this shape
of the chocolate bar in advertisements to promote its sale.
[14] That ordinary consumers are able to recognise the shape of Nestlé's Kit Kat finger wafer chocolate bar is
borne out by the results of two market surveys conducted by Nestlé during 2005 and 2011 in which
consumers were shown a photograph of each of the Kit Kat chocolate bars in black and white in the form
applied for (and subsequently registered) and asked whether any foodstuffs came to mind. In both surveys a
significant number of consumers associated the shape depicted with chocolate or confectionary as well as
with Nestlé and the Kit Kat brand. I agree with the submission made by Counsel for Nestlé that Iffco has not
challenged the survey evidence in any meaningful way save to submit that the fact that the public recognised
the mark is irrelevant for its interpretation. However, the fact that the consumers surveyed, when shown the
identical twodimensional pictures which were the subject of the application for the registration of the 2 finger
and 4 finger wafer shape trade marks, recognised them as the threedimensional Kit Kat chocolate bar,
without any endorsement to clarify that what was depicted was the shape or appearance of the chocolate
bar, is relevant to an objective assessment of what the perception of the notional ordinary consumer would
be.
Page 498 of [2015] 1 All SA 492 (SCA)
[15] A further argument advanced by Iffco was that because a certain portion of the specifications of goods
claimed by Nestlé, in respect of the marks could not take the shape of the goods contended for it meant that
the applications as filed, when objectively viewed, were not marks for the shape of goods, but rather for
materials intended as ornamentation for packaging and the like. In addition, because the consumers surveyed
were not shown the specifications of the goods claimed their views were, accordingly, unreliable. As the
distinctive shape of the chocolate bars in question were readily identifiable by a significant number of
consumers, in my view the inclusion of the list of specifications would not have drastically altered these
results. For the same reason, the objective perception by the notional ordinary consumer of the shape
claimed, in my view, would not be affected by the addition of other goods in addition to "cocoa and
preparations having a base of cocoa, chocolate, chocolate confectionary, sweets, candies, sugar . . ." in the
specifications. In any event, even if some of the goods listed in the specifications could not take the shapes
as depicted in the applications, this does not lead to the conclusion that what were depicted were not
shapes. It could equally be concluded that Nestlé included some goods that it did not intend to use as part of
the marks claimed. If this is so the appropriate remedy would be to apply for their removal in terms of sections
10(4), 24(1) and/or 27(1)(a) of the Act. In addition, after five years of nonuse of any of the goods specified
with the mark, application could be made by any interested person for their removal from the register in terms
of section 27(1)(b) of the Act.
[16] Because the 2 finger and 4 finger wafer shape trade marks filed without any endorsements, would objectively
have been interpreted by the notional ordinary consumer as twodimensional depictions of threedimensional
shapes, the endorsements which Nestlé applied for did not affect the identity of the finger wafer shape trade
marks and were included simply to clarify the rights it claimed. In this regard, I agree with the view of the
court a quo, that even if the notional consumer was confused as to whether the marks were twodimensional
or threedimensional, the endorsements constituted a limitation in that the marks were limited to a three
dimensional shape. It is not without significance that Mr Catic, the director of international business
development of Iffco, and the deponent to the affidavits filed on behalf of Iffco, stated the following in this