[42] Iffco submitted that there is no evidence to show any actual instances of confusion over the nine years that
the chocolate bar of Nestlé and that of Iffco have been sold sidebyside in Shoprite stores. Evidence of actual
confusion may be of special value in a particular case,18 but as pointed out by this Court, however, the
likelihood of deception or confusion is "a matter for the court to decide and, taking into account the difficulties
associated with the admissibility and the weight to be given to such evidence, no significance can be attached
to the absence of this evidence."19 In my view, by virtue of the fact that the shape of Iffco's chocolate Break
bars is identical to that of Nestlé's Kit Kat chocolate bar, whether in the 4 finger or 2 finger wafer varieties,
when viewed through the eyes of the
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ordinary consumer, sidebyside and apart, as a matter of global first impression there exists a likelihood of
deception or confusion.
[43] The issue of whether the ordinary customer would perceive the finger wafer shape depicted in two
dimensions on the packaging of Iffco's "Break" chocolate bars, as well as the threedimensional shape of the
chocolate bar itself, as a source identifier, ie as a badge of origin of the chocolate bar, must be considered in
context. The court a quo concluded that customers would not see the depictions of the chocolate fingers on
the respondent's packaging as an indication of their origin, but simply as an indication of what was inside the
package. In other words, purely descriptive use of the mark. The court also recorded that when seeing the
product after opening the package, the consumer would also not believe that the product emanates from
Nestlé, or that there was any connection between the product and Nestlé's product. It appears that the main
factor which led the court a quo to this conclusion was the fact that the most prominent feature of the
packaging was the word "Break" which was in capital letters, with the word "Tiffany" above the word "Break"
in an elliptical circle. In effect, the court a quo minimised the depiction of the shape of the chocolate bar on the
packaging.
[44] The evidence of surveys conducted by Nestlé, referred to above, is of importance in this regard. It is clear that
the unique shape of Nestlé's Kit Kat chocolate bar has been advertised and sold for 50 years in South Africa.
The market survey has established that a significant number of consumers associated the shape of the
chocolate bar with Nestlé's Kit Kat product. In this regard, Iffco contended that the surveys were of no
assistance because they were conducted in 2005 and 2011 respectively, whereas Iffco had commenced their
conduct in June 2002 and the lawfulness of their conduct is to be assessed at that date. It was further
submitted that Nestlé has to show that as at June 2002 the public would have perceived the use by Iffco as
trade mark use, for the reason that the rights of one party cannot be overtaken by another. 20 What has to
be determined is the perception of the consumer as to the existence of a material link between the two
products. The evidence of the surveys is not conclusive but simply of relevance in determining this issue. The
results of these surveys must be considered in the context of the clear evidence that Nestlé has marketed
and sold its Kit Kat chocolate bar in its present shape in South Africa for more than 50 years. This is not a case
where the evidence is that Nestlé only sold and acquired a reputation in the shape of its Kit Kat chocolate bar
after Iffco entered the market with its Break bar in June 2002, and that Nestlé now seeks to rely upon that
subsequently acquired reputation to disentitle use by Iffco of the almost identical shape of its Break chocolate
bar. The evidence to the contrary is that Nestlé enjoyed a reputation in the shape of its Kit Kat chocolate bar
before Iffco even entered the South African market. I agree with the submission of Nestlé that once it is
accepted, as the court a quo did, that Nestlé enjoys a reputation in its finger wafer shapes, whether in the 4
finger or 2 finger
Page 507 of [2015] 1 All SA 492 (SCA)
varieties, it follows that these shapes are distinctive and designate the origin of the proprietor.
[45] The fact that according to Iffco it is common in the confectionary industry to depict the actual product in the
packaging, so that the consumer knows what is inside the packaging does not per se mean that such use
constitutes descriptive use. What is of importance is whether the shape of the product depicted on the
packaging, is a shape that is capable of distinguishing the product of the owner of the shape trade mark in
question from the products of competitors.21 If the public perceives that shape of the product depicted on
the packaging as a badge of origin this would not constitute descriptive use.
[46] In addition, this Court has held that one cannot use a trade mark and then argue that it was used as
ornamentation.22 This is not a case where the finger wafer shape trade marks of Nestlé have been altered in
some way by Iffco to distinguish their "Break" chocolate bars from that of Nestlé's "Kit Kat" chocolate bars. As
pointed out above, the shape of the chocolate bars are almost identical, save for the insignificant decorative
pattern which is embossed on the tops of Iffco's chocolate bars.
[47] I, accordingly, conclude that the court a quo erred in finding that consumers would not be deceived or
confused by the depiction on the packaging of Iffco's chocolate bars nor by the shape of their chocolate bars
as to the origin of the chocolate bars. 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.23
[48] The use by Iffco of the 4 finger and 2 finger wafer shape trade mark of Nestlé, accordingly, contravenes
section 34(1)(a) of the Act. The court a quo, 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)(a) of the Act. Whether Nestlé
is entitled to an order interdicting Iffco from using this trade mark, requires the consideration of a number of
special defences raised by Iffco, namely waiver, acquiescence and estoppel, in due course.
[49] Nestlé also relied upon the provisions of section 34(1)(c) of the Act to restrain the use by Iffco of the finger