when priority can be claimed for filing of "convention applications" in foreign countries in terms of the Paris
Convention. Consequently, if a mark which on the date of filing of the domestic application was a device mark,
and was disseminated internationally on that basis, was later transformed in the domestic country to a shape
or other form of mark, an anomaly would arise. The international derivations of the mark would be for device
marks but the domestic application would be for a shape mark. I agree, however, with the submission by
Nestlé that insofar as the South African application may be used as a priority application in foreign countries, it
will be for those foreign countries to determine whether that priority is legitimately claimed. In the face of the
clear and unambiguous wording of section 16(5) of the Act, the discretion of the Registrar and the court is
unfettered and includes the power to allow amendments to applications which substantially affect the identity
of the mark. I agree, however, with Webster et al8 that caution should be exercised in allowing
Page 501 of [2015] 1 All SA 492 (SCA)
a substantial amendment to a mark and that if injury or prejudice will result to another party, or the public, it
should not be allowed. For the reasons set out above, no substantial amendment was made to the shape
mark of Nestlé and no prejudice or injury resulted.
[24] Iffco's appeal against the refusal by the court a quo to review the Registrar's decision on these grounds must,
accordingly, fail.
Iffco's counterapplication for the expungement of Nestlé's finger wafer shape trade mark registrations
[25] The application by Iffco for the expungement of Nestlé's finger wafer shape trade marks is limited to
section 10(5) of the Act. Section 10 of the Act deals with unregistrable trade marks and section 10(5) provides
as follows:
"10.
The following marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of
sections 3 and 70, be liable to be removed from the register:
. . .
(5)
a mark which consists exclusively of 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."
[26] The cornerstone of Iffco's challenge is that the trapezoidal shape of Nestlé finger wafer shape trade mark
registrations is entirely a technical requirement. It is not in dispute that chocolate bars have to be trapezoidal
in shape when viewed in crosssection in order to facilitate their release (the socalled "release angle") from
the moulds in which they are formed. In short, its shape was merely functional. What is, however, in issue is
whether the additional elements which contribute to the shape of Nestlé's finger wafer shape trade marks
(other than the crosssectional trapezoidal shape) are not distinctive but simply "banal" arbitrary additions to
the shape of the product. If they are then Nestlé's finger wafer shape marks consist exclusively of a shape
which is necessary to obtain a specific technical result (ie release of the chocolate bar from the mould) were
not registrable and are to be expunged from the register.
[27] Section 10(5) is concerned with the question of "whether the registered shape is necessary to obtain a
specific technical result"9 or whether "the essential functional features of that shape are attributable only to
the technical result."10
[28] Both parties relied upon certain decisions of overseas tribunals, in which Nestlé's finger wafer shape marks
were in issue, as support for their competing contentions.
[29] Nestlé relied upon the findings made by the Second Board of Appeal of the Office for Harmonization ("OHIM")
in the United Kingdom in the case of Société des Produits Nestlé SA v Cadbury Holdings Ltd (11 December 2012).
One of the issues for determination there was whether the shape of Nestlé's 4 finger wafer bar was
precluded from registration because its shape consisted exclusively, in its essential characteristics, of the
shape of the goods which was technically causal of, and sufficient to obtain the
Page 502 of [2015] 1 All SA 492 (SCA)
intended technical result. It was held that the shape in question possessed three attributes which were not
necessary to achieve the technical function. Firstly, the rectangular base upon which the four identical
trapezoidal bars were aligned was not a feature which responded to a technical need or performed a
technical function of the goods at issue. Secondly, even if it were considered that the bars served the purpose
of facilitating the partition of the product into four portions at the moment of consumption, this solution was
neither technical nor essential in the shape of the chocolate bar. Thirdly, the technical solution could be
incorporated without difficulty by competitors in shapes which did not have the same nonfunctional elements
as contained in Nestlé's chocolate bar such as the trapezoidal shape of each bar, the alignment of the bars,
the alignment into four bars, the common joining base and its rectangular shape.11
[30] Although the Second Board of Appeal remarked that these nontechnical features were rather banal, the fact
remained that these characteristics, not dictated by any technical reason, were sufficient to make that shape
recognised by the relevant public as a badge of origin, as an indication of the commercial origin of the
products bearing them.12
[31] Iffco, in turn, relied upon the decision of the United Kingdom's Intellectual Property Officer (IPO) dated 20 June
2013 in the case of Société des Produits Nestlé SA v Cadbury Holdings Ltd in opposition proceedings. The main
findings were as follows. Firstly, it was held that the basic rectangular "slab" shape represented by the mark
was a shape which results from the nature of moulded chocolate bars. Secondly, the presence of breaking
grooves was a feature which was necessary to achieve a technical result. Thirdly, the angle of more than 810