be registered as a trade mark or if registered shall be liable to be removed from the register.
It is clear that the mark must have characteristics which render it factually capable of distinguishing. No amount
of use will render marks distinctive which factually have no distinguishing characteristics. See: British Sugar plc v
James Robertson & Sons Ltd [1996] RPC 281 (ChD) 305 at lines 3750; Philips Electronics BV v Remington Consumer
Products Ltd [1999] RPC 809 (CA) 817 line 43818 line 37.
However, the proviso to section 10(2) provides that a mark shall not be refused registration or liable to be
removed from the register if at the date of the application for registration or at the date of an application for
removal as the case may be, it has in fact become capable of distinguishing within the meaning of section 9 a s a
result of use made of the mark.
Consequently the registration of the mark offends against the provisions of section 10(2)(a) of the Act if the
trade mark was not inherently capable of distinguishing or capable of distinguishing by reason of use prior to the
date of application for registration, at the date of the application for its registration. If thereafter, the trade mark did
not become capable of distinguishing through use within the meaning of section 9 and accordingly did not fall within
the proviso to section 10 of the Act, it in addition became a mark which wrongly remained on the register. If, as at
the date of its registration, the trade mark was capable of distinguishing through use but nevertheless thereafter
became not capable of distinguishing at the time the expungement application was brought, then the mark is
wrongly remaining on the register within the meaning of section 24(1) as it offends against the provisions of section
10(2)(a) of the Act.
Both under the repealed Act and the present Trade Marks Act postregistration events were held to have been
relevant to the continuing validity of a trade mark (see: Luster Products Inc v Magic Style Sales CC1 1997 (3) SA 13
(A) at 22FH and Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd and another2 2000 (2) SA 771 (A) at
777D778B).
In the Cadbury case Harms JA at 778GH in determining whether a word mark was capable of distinguishing
posed the question whether "Liquorice Allsorts is the name of the product (a type of confectionery) or whether it is
the name of Beacon's product". Similarly, in my view, can the question be posed in the present matter: is mark
95/13154 the shape or configuration of the tablet or is it the shape or configuration of the first respondent's tablet?
In Philips Electronics BV v Remington Consumer Products [1998] RPC 283 (ChD) the court posed the question thus at
301:
Page 133 of [2001] 2 All SA 126 (T)
View Parallel Citation
"Thus I think the real question here is whether there is factual bar preventing the sign from really being distinctive.
I think the test for this is to ask whether, no matter how much the sign may be used and recognised, it can really
serve to convey in substance only the message: 'here are a particular trader's goods'."
The authors Webster and Page, South African Law of Trade Marks 4 ed paragraph 3.40 at 342 suggests the
following:
"The question could also take the following form. Does the sign indicate that the product or services are distinct
from the product or services of the same kind which do not bear the sign, or does the sign only tell the customer
what the product or services are?"
The first enquiry then is to determine whether the trade mark is inherently capable of distinguishing. If not, then
having regard to the proviso, it seems to me the onus would rest on first respondent to prove that it has become
registrable through its use as a trade mark.
Counsel informed me that there is no, and I could find no decided authority in South Africa as to the test to be
applied in determining whether a particular shape is inherently distinctive. This issue has, however, been
considered by courts in the United Kingdom (see British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281
(ChD) at 305 line 37306 line 15). It seems to me that in South Africa, as in the United Kingdom, a mark is inherently
not capable of distinguishing when it cannot do the job of distinguishing without the public first being educated that
the sign is a trade mark. (See also: Philips Electronics BV v Remington Consumer Products (supra) at 302).
It seems to me that a consideration in determining whether a mark is inherently capable of distinguishing
remains whether other traders are likely, in the ordinary course of their business and without any improper motive,
to desire to use the same mark or some mark nearly resembling it, upon or in connection with their own goods.
(See: Distillers Corporation (SA) Ltd v Stellenbosch Farmers Winery Ltd 1979 (1) SA 532 (T) at 536GH).
In the present matter I am mindful of the fact that where an inherently nondistinctive sign is applied for and has
in practice always been used with a distinctive sign, in the present case the word mark Augmentin, the first
respondent must show that, contrary to the more obvious conclusion that it is the distinctive sign which really does
the job of distinguishing, in fact the nondistinctive sign has come to be regarded as a second trade mark capable
by itself of distinguishing its pharmaceutical product. There is no evidence in the present matter to suggest that a
medical practitioner prescribes an antibiotic with reference to the shape nor that there is patient recognition with
reference to the shape of the tablet. The evidence does disclose, however, that no pharmacist will dispense with
reference to the shape of the tablet.
Respondents contend that the shape and configuration of the tablets are widely recognised and known and that
the shape is distinctive. Respondents point out that all foreign law must be approached with caution "because the