which held as follows (Philips III par 4750):
"47.First, it is clear from Article 2 of the Directive [which provides that a trade mark 'must be capable of
distinguishing the goods or services of one undertaking from those of other undertakings] that a trade mark has
distinctive character if it serves to distinguish, according to their origin, the goods or services in respect of which
registration has been applied for. It is sufficient, as is clear from paragraph 30 of this judgment, for the trade
mark to enable the public concerned to distinguish the product or service from others which have another
commercial origin, and to conclude that all the goods or services bearing it have originated under the control of
the proprietor of the trade mark to whom responsibility for their quality can be attributed.
48. Second, Article 2 of the Directive makes no distinction between different categories of trade marks. The criteria
for assessing the distinctive character of threedimensional trade marks, such as that at issue in the main
proceedings, are thus no different from those to be applied to other categories of trade mark.
49. In particular, the Directive in no way requires that the shape of the article in respect of which the sign is
registered must include some capricious addition. Under Article 2 of the Directive, the shape in question must
simply be capable of distinguishing the product of the proprietor of the trade mark from those of other
undertakings and thus fulfil its essential purpose of guaranteeing the origin of the product.
50. In the light of those considerations, the answer to the second question must be that, in order to be capable of
distinguishing an article for the purposes of Article 2 of the Directive, the shape of the article in respect of which
the sign is registered does not require any capricious addition, such as an embellishment which has no
functional purpose."
[19] One has to agree that a capricious addition to a mark is not necessary for it to be capable of distinguishing but
that does not mean that such an addition could not be an important element in deciding whether a particular
mark is capable of distinguishing within the meaning of section 9. This
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must be so especially if the mark consists of the shape of a functional article because they are usually bought
because of the functionality of their shape and not because their provenance is proclaimed by their shape.
[20] The factual inquiry under section 9 read with the proviso to section 10 is done
View Parallel Citation
in two stages.17 The first is whether the mark, at the date of application for registration, was inherently
capable of distinguishing the goods of Beecham from those of another person. If the answer is no, the next
inquiry is whether the mark is presently so capable of distinguishing by reason of its use to date.
[21] Beecham, with reference to a textbook, stressed the following statement, which was accepted by Triomed's
expert during crossexamination
"With the competitive nature of the pharmaceutical industry, marketing considerations often focus on unique tablet
designs that have consumer appeal and can easily be distinguished from other products of a similar nature or used
for the same indication."
As a general statement of fact it is no doubt correct but it begs a number of questions. Was the tablet in issue
"unique" (although that is somewhat different from what the Act requires)? Can it "easily" be distinguished
from other products? Does the design perform a "badge of origin" function or does it simply assist in
distinguishing the tablet from other tablets?
[22] Another aspect impressed upon us by Beecham is the fact that the registration is limited to "antibiotics". We,
according to the submission, may not have regard to other pharmaceuticals in assessing the distinctiveness of
the shape, not even to antibacterial tablets. The submission is too narrowly structured especially since trade
mark registration potentially protects the trade mark against use on similar goods (section 34(1)). It is also
somewhat unrealistic considering the nature of the pharmaceutical trade.
[23] At the time of the launch of Augmentin another company, Eli Lilly, already for a number of years had marketed
an antibiotic tablet with the shape of the registered trade mark. It was, unsurprisingly, also white. A standard
work, the Tableting Specification Manual, shows oval, biconvex tablets as something ordinary and refers to the
shape as a "common" tablet shape. The Encyclopaedia of Pharmaceutical Technology illustrates the same tablet,
stating that it is one of the "most common special shapes in the pharmaceutical industry". (Common non
special in its terminology is a round tablet). Another standard work, the German Die Tablette, shows graphically
a tablet identical to Augmentin. These facts and they are not the only ones establish conclusively that the
particular shape in issue was not inherently capable of distinguishing in the trade mark sense.
[24] The shape did also not become distinctive through use. Admittedly, millions of these tablets are dispensed
annually and the average pharmacist will probably recognise an Augmentin tablet as such. As discussed, the
shape of Augmentin does not distinguish Beecham's tablets
View Parallel Citation
from tablets sold by others18 but distinguishes them somewhat from other tablets, and
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no pharmacist will regard the shape alone as a guarantee that the tablet comes from Beecham. In addition,
Augmentin represents but one of an infinite number of shapes of the mark as registered. There are many