and its representation on the packaging of its Break 4 finger wafer product:
As well as the shape of Iffco's Break Mini 2 finger wafer product:
And its representation on the packaging of its Break Mini 2 finger wafer product:
[38] What is immediately apparent is that the shape of Iffco's 'Break' chocolate bars are almost identical to
Nestlé's 4 finger and 2 finger wafer shape trade
Page 505 of [2015] 1 All SA 492 (SCA)
marks. The only insignificant difference is the superficial decorative pattern which is embossed on the top of
Iffco's chocolate finger wafer bars.
[39] In terms of section 34(1)(a) of the Act, Nestlé has to establish that Iffco has used the mark in respect of the
same goods for which the trade marks are registered which is either identical to, or so nearly resembles the
registered trade mark, so as to be likely to deceive or cause confusion. The mark is used in respect of the
same goods, namely chocolate bars. The issue, accordingly, is whether there is a likelihood of confusion or
deception between the chocolate bars. In addition, Nestlé has to establish that Iffco is using the finger wafer
shapes themselves, or on the packaging of their chocolate bar "Break", as a badge of origin and not simply in
a descriptive manner.
[40] The use of the trade mark must be:
"such that it creates the impression that there is a 'material link in trade between the third party's goods and the
undertaking from which those goods originate'. There can only be primary trade mark infringement if it is established
that consumers are likely to interpret the mark, as it is used by the third party, as designating or tending to designate
the undertaking from which the third party's goods originate."15
[41] As regards the likelihood of deception or confusion:
"what is required is an interpretation of the mark through the eyes of the consumer as used by the alleged infringer.
If the use creates an impression of a material link between the product and the owner of the mark there is
infringement; otherwise there is not. The use of a mark for purely descriptive purposes will not create that impression
but it is also clear that this is not necessarily the definitive test."16
The issue is whether the public would perceive the finger wafer shape to perform the function of a source
identifier and for that purpose the finger wafer shape must be considered in context and not in isolation.17