Triomed (Pty) Ltd v Beecham Group PLC
 2 All SA 126 (T)
Transvaal Provincial Division
19 December 2000
2001 (2) SA 522 (T)
. Editor's Summary . Cases Referred to . Judgment .
 Intellectual property law Trade marks Application to expunge registered trade mark A trade mark which consists
of a common shape must be of a distinctive nature and not such as to enable certain traders to acquire a monopoly in the
most appropriate shapes for the goods concerned.
 Intellectual property law Trade marks Application to expunge registered trade mark Whether trade mark met
requirements for validity In not possessing any distinguishing characteristics, the mark was not registrable.
Page 127 of  2 All SA 126 (T)
 Intellectual property law Trade marks Infringement of Failure to prove infringement resulting in dismissal of
 Trade marks Application to expunge registered trade mark Whether trade mark met requirements for validity
Trade mark not registrable as it did not possess any distinguishing characteristics.
A registered trade mark owned by the First Respondent in respect of a certain antibiotic formed the centre of the
present dispute. The Applicant brought an urgent application to expunge the trade mark. Apart from opposing that
application, the First Respondent brought a counterapplication seeking relief based on trade mark infringement,
passing off, copyright infringement and unlawful competition. The Applicant and First Respondent were trade
Held Main application for expungement
The First Respondent's antibiotic was sold in tablet form. The tablets bore the shape depicted in the trade mark.
The Applicant sold and distributed an antibiotic under its own trade mark. The shape of its tablet was essentially
the same as that used by the First Respondent. According to the Applicant, the First Respondent was attempting to
monopolise a shape of tablet which other pharmaceutical companies were using. It was further contended that the
trade mark was incapable of distinguishing the First Respondent's pharmaceutical product from those of other
It was held that the court's general powers to rectify entries in the trade mark register are set out in section
24(1) of the Trade Marks Act 194 of 1993. Various grounds for the application for expungement were advanced by
the Applicant, some of which overlapped. The Court therefore decided to consider the cumulative effect of the
Section 9 of the Act deals with the requirements for registrable trade marks and provides that a trade mark shall
be capable of distinguishing the goods or services of a person in respect of which it is registered from those of
another person. The Applicant argued that the trade mark of the First Respondent merely consists of an oval
shaped tablet, such as that commonly found in use in the pharmaceutical industry. It was said to bear no
distinguishing features or characteristics by which the public would recognise the shape of the tablet as constituting
a trade mark. The Respondents disagreed, alleging that the shape and configuration of the tablets were widely
recognised and the shape was distinctive.
Further reliance for the application was sought in section 10(2)(a) of the Act. This section provides that a mark
which is not capable of distinguishing within the meaning of section 9 shall not be registered as a trade mark, or if
registered shall be liable to be removed from the register. The mark therefore had to have characteristics which
rendered it factually capable of distinguishing.
The Court posed the question of whether the shape of the tablet was simply generic, or whether it was specific
to the product of the First Respondent. It first had to be determined whether the trade mark was inherently capable
of distinction. If not, then the First Respondent would have to prove that it had become registrable through use.
Whether a mark is inherently capable of distinguishing depends on whether other traders are likely, in the ordinary
course of their business and without any
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