trade mark under consideration as well as the mark Augmentin and is sold in sizes of 375 mg and 625 mg. The
applicant has sold and distributed an amoxcycillin antibiotic under its trade mark Maxcil. The applicant has adopted
the trade mark Augmaxcil for its generic equivalent of Augmentin and the shape of its tablet is for all practical
purposes the same shape of tablet as that used by the first respondent for its Augmentin antibiotic. The first
respondent was the originator of an antibiotic consisting of a mixture of amoxcycillin and clavulanic acid.
It is applicant's case that the first respondent is endeavouring to monopolise a shape of tablet which other
pharmaceutical manufacturers or distributors, including applicant, are using or may reasonably want to use in the
course of the pharmaceutical trade. The trade mark in question, according to applicant, is incapable of distinguishing
the first respondent's pharmaceutical products, including antibiotics, from those of other pharmaceutical
manufacturers. According to first respondent, however, it is not seeking to obtain a monopoly in the shape of a
tablet which others are using or may want to use.
Page 131 of [2001] 2 All SA 126 (T)
"The trade mark in question
View Parallel Citation
is capable of distinguishing the first respondent's product for antibiotics from those of other similar products, and
has become distinctive in relation to antibiotics."
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, hereinafter referred to as the Act. The relevant portions of the section provides as follows:
"24(1) In the event of . . . an entry wrongly made in or wrongly remaining on the register . . . any interested
person may apply to the court . . . for the desired relief and thereupon the court . . . may make such order for . . .
removing . . . the entry as it . . . may deem fit."
I am satisfied in the present matter that the applicant is an "interested person" as provided for in section 24(1) and
that it consequently has locus standi to bring the application (see Danco Clothing (Pty) Ltd v NuCare Marketing Sales
and Promotions (Pty) Ltd and another 1991 (4) SA 850 (A) at 855B856B).
Applicant's grounds for expungement
Applicant relies on various grounds on which the expungement of the trade mark in question is sought. I intend
considering hereinafter seriatim the grounds relied on by applicant. In doing so I keep in mind that some of the
various grounds relied on by applicant are overlapping and in deciding the issue I will consider the cumulative effect
of the various grounds.
Section 9 of Act 194 of 1993
Section 9 of the Act sets out the requirements for registrable trade marks and provides:
"9
(1)
In order to be registrable, a trade mark shall be capable of distinguishing the goods or services of a
person in respect of which it is registered or proposed to be registered from the goods or services of
another person either generally or, where the trade mark is registered or proposed to be registered
subject to limitations, in relation to use within those limitations.
(2)
A mark shall be considered to be capable of distinguishing within the meaning of subsection (1) if, at the
date of application for registration, it is inherently capable of so distinguishing or it is capable of
distinguishing by reason of prior use thereof."
Applicant's contentions regarding the requirements of section 9 are inter alia summarised as follows in its founding
papers:
"Mark 95/13154, as represented in Annexure 'GH3', simply consists of an oval shaped tablet, such as that
commonly found in use in the pharmaceutical industry. It bears no distinguishing features or characteristics by
which the public would recognise the shape of the tablet as constituting a trade mark and as will appear hereafter
the shape is not recognised as a trade mark by pharmacists or members of the public. It is simply devoid of any
inherent distinctive character, apart from any issues of functionality to which I shall revert later in this affidavit."
Not so, say respondents. The shape and configuration of the tablets are widely recognised and known and the
shape in question is distinctive and was designed
Page 132 of [2001] 2 All SA 126 (T)
to be distinctive. The whole of the mark must be considered, so respondents contend. It is impermissible to dissect
the
View Parallel Citation
mark into its components and to contend that the mark contains, inter alia, an "ellipse" or other similar oval shape.
Section 10(2)(a) of Act 194 of 1993
Whereas section 9 of the Act deals with registrable trade marks section 10 sets out those marks which shall not be
registered as trade marks. Applicant relies as one of the grounds for expungement on the provisions of section
10(2)(a) which provides that a mark which is not capable of distinguishing within the meaning of section 9 shall not