conditions and limitations. The term "limitations" was defined to include a limitation as to the mode of use of
the exclusive right to the use of a trade mark (section 2 sv "limitations") and a geographical limitation would
probably be covered thereby. A limitation such as the present, ie, for "alcoholic beverages produced in South
Africa" appears to be a permissible limitation.
[13] The original registration of a trade mark registered under the 1963 Act in Part A of the register (the 1993 Act
no longer provides for separate parts of the register) is, after seven years from the date of registration, taken
to be valid in all respects unless, ia, "the trade mark offends against" the provisions of section 16 (section
42). The date of registration is considered to be the date of application for registration (16 February
1977).16Section 16(1) of the 1963 Act stated that it was not lawful to register "any matter the use of which
would be likely to deceive or cause confusion" as a trade mark.
[14] In terms of the transitional provisions contained in section 70(1) of the 1993 Act, these provisions survived
since the validity of the original entry of existing trade marks has to be determined in accordance with the
laws in force at the date of the entry. But not much turns on this because under the 1993 Act a mark that "is
not capable of distinguishing" in the trade mark sense is liable to be expunged unless it has in fact become
capable of distinguishing as a result of the use of the mark (section 10(2) read with the proviso to section
10).
Page 222 of [2006] 4 All SA 215 (SCA)
[15] That then brings me to the factual question whether, during 1977, a Bocksbeutel could have performed a
"badge of origin" function enabling it, without more, to distinguish the wine of one producer from that of
another. In the light of the common cause facts, the answer must clearly be in the negative. If one were to
put a socalled Grünberger bottle, stripped of its labels, next to a nude vino verde or Frankenwein bottle, one
would not be able to distinguish the one from the other. On the contrary, the use of the Grünberger bottle as
a trade mark would, in
View Parallel Citation
these circumstances, be palpably misleading. But, Bergkelder ripostes, the use of the Bocksbeutel as some or
other kind of geographical indication by Franconians, Portuguese and some Italians is proof of the fact that a
Bocksbeutel has the inherent capability to act as a badge of origin. The answer is this: a Bocksbeutel may have
some informal and limited function as a certification or collective mark but that fact in itself establishes
conclusively that it cannot be a badge of origin in the ordinary trade mark sense, ie, it cannot distinguish the
goods or services of one person from those of another.17
[16] Secondly, Bergkelder argues that its Bocksbeutel could distinguish its locally produced wine from any other
locally produced wine bearing in mind that there were no other local producers at the registration date. That,
it said, should be the inquiry because of the limitation. The High Court dismissed this argument. It held that
Bergkelder's reliance on the limitations of use in order to create a monopoly is misconceived because when
Bergkelder's mark is stripped of its labelling, the bottle serves no distinguishable feature and the wine bottled
in that mark could have been produced anywhere.
[17] I respectfully agree. During argument the following example was put to counsel. Would it be possible to
register as a container mark the wellknown Dimple bottle (used for marketing Scottish whisky) in respect of
"spirits produced in South Africa" without causing confusion?18 The only answer counsel could offer was that
there is apparently some regulation somewhere that requires wines and spirits to contain an indication of the
country of origin and that the ordinary purchaser would look for that indication and would then know that the
product has a different source. I cannot accept the proposition. To paraphrase a statement in Viking,19 this
response acknowledges that Grünberger's commercial origin is ultimately identified on the basis of other
distinguishing features and that the consumer will therefore not see the bottle as a sign indicating that the
goods come from a particular undertaking but will rather see it merely as an aspect of the marketing of the
particular wine. Were it otherwise, there could not be any confusion in the trade mark sense between
Grünberger
Page 223 of [2006] 4 All SA 215 (SCA)
wines (supposing that they are South African) and an imported wine bearing the same name mark.
[18] Bergkelder placed some reliance on the fact that since the date of registration Grünberger was the only local
wine marketed in a Bocksbeutel
View Parallel Citation
and that, if it comes to wine sales in Bocksbeutels, Grünberger was dominant in the market. Therefore,
according to the submission the container in question has (in terms of the proviso to section 10 of the 1993
Act) in fact become capable of distinguishing as a result of the use of the mark. This Court has rejected a
similar argument20 because it is based on the "unspoken and illogical assumption that 'use equals
distinctiveness'"21 and loses sight of the fact that "to be really distinctive of a person's goods [a trade mark]
must generally speaking be incapable of application to the goods of anyone else."22 Put differently, although
the shape of the container may assist in distinguishing Bergkelder's wine, a Bocksbeutel cannot per se perform
the "badge of origin" function with other wines in Bocksbeutels on the market.
[19] For these reasons it is unnecessary to deal with the other issues raised in the appeal and the following order