Beecham Group Plc and Others v Triomed (Pty) Ltd (100/01) [2002] ZASCA 109; [2002] 4 All SA 193 (SCA) (19 September 2002)

About SAFLII
Databases
Search
Terms of Use
RSS Feeds
South Africa: Supreme Court of Appeal
SAFLII
>>
Databases
>>
South Africa: Supreme Court of Appeal
>>
2002
>>
[2002] ZASCA 109
|

|

Beecham Group Plc and Others v Triomed (Pty) Ltd (100/01) [2002] ZASCA 109; [2002] 4 All SA 193 (SCA); 2003 (3) SA 639 (SCA); 2002 BIP 101 (SCA) (19 September 2002)

Reportable
Case No 100/01
In
the matter between:
BEECHAM GROUP PLC
First Appellant
SMITHKLINE BEECHAM
PHARMACEUTICALS (PTY) LTD
Second Appellant
and
TRIOMED (PTY) LIMITED
Respondent
Coram: HARMS, SCOTT, MPATI, CONRADIE JJA and JONES AJA
Heard: 3 SEPTEMBER 2002
Delivered: 19 SEPTEMBER 2002
Subject: Trade Marks; functional shapes; pharmaceutical tablet.
JUDGMENT
HARMS JA/
HARMS JA:
[1] This appeal represents yet another battle in the war concerning
generic pharmaceuticals. Recently we had occasion to uphold a
copyright claim relating to the package insert for a drug consisting
of two substances, amoxycillin (a semi-synthetic penicillin)
and
potassium clavulanate, marketed by the appellants
1
under the trademark Augmentin.
2
On this occasion Beecham wishes us to uphold a registered trade mark
for the shape of a tablet, used in relation to Augmentin tablets,
and
to find that the respondent (‘Triomed’) infringes that trade
mark. Triomed imports a pharmaceutical with the same composition
and
sells it under the name Augmaxcil. These tablets have the same shape
and colour (white) as Augmentin tablets but, whereas the
name
‘Augmentin’ is embossed upon the one side of the latter, the
Augmaxcil tablets are blank.
[2] Triomed applied to the Transvaal Provincial Division for an order
rectifying the Trade Marks register by the expungement of the
shape
trade mark (no 95/13154). Beecham countered by applying for trade
mark relief not only in relation to this trade mark but
also in
respect of its word mark ‘Augmentin’. Triomed’s application
succeeded and the counter-application was dismissed.
3
The trial Judge, Smit J, subsequently granted leave to Beecham to
appeal against his orders, save the one dismissing the claim for
infringement of the word mark.
[3] Since its patent in relation to the composition has expired,
Beecham no doubt wishes to protect its market in some other way
and
this case provides another illustration of the tension between
competition principles (the right to compete and the right to
copy)
and intellectual property rights, and also between different types of
intellectual property rights. There is an ever-increasing
tendency
to seek protection in a field not designed or intended to cover the
area. This is not always particularly difficult since
intellectual
property rights, because of international developments, business
realities and parliamentary involvement, may overlap
or exist
parallel to each other.
4
By way of illustration: Functional designs originally could be
protected as patents. Later it was recognised that they may obtain
copyright protection if derived from drawings. This, in its raw
form, was commercially unacceptable and
s 15(3A)
of the
Copyright Act
98 of 1978
placed a lid on this protection.
5
Some countries provide petty patent or design copyright protection
for them while the
Designs Act 193 of 1993
introduced design
protection for them on lines similar to that for aesthetic designs.
They did not have protection against passing-off
6
and could not be registered as trade marks. The latter prohibition
(subject to limitations) has fallen away as will be discussed
in more
detail. (Whether the absolute passing-off rule still makes sense in
the light of changes to the trade mark position is a
moot question;
an adaptation along trade mark lines may be a future development.)
The requirements for protection under each head
differ, as do the
nature and duration of the protection. This requires that each right
should be kept firmly within its legitimate
bounds.
[4] The effective date of Beecham’s trade mark is 3 October 1995
and it is registered for ‘antibiotics’ in class 5 (which includes
pharmaceutical preparations) of schedule 3 of the Trade Marks
Regulations. According to the Registrar’s certificate, the mark
‘consists in the shape and curvature configuration of a tablet
substantially as shown in the representation’ on a black and white
photograph. Due to the poor quality of the photograph I prefer to
use a drawing of an Augmentin tablet to illustrate the trade mark.

No regard should be had to the dimensions indicated.
The exact description of the shape of the tablet was the subject of
much evidence but it would not be unfair to state that the tablet
is
bi-convex with a regular oval (i.e. elliptical and not egg-like)
shape. Beecham’s package insert calls it ‘oval’ and the
draughtsman of the drawing above refers to the tablet as oval and the
tablet shape as convex. It is not without significance to
note that
the mark is not limited by either colour or size.
[5] Any interested person may apply to court for the removal of an
entry wrongly made in or wrongly remaining on the Trade Mark
register.
7
Triomed, as an interested party, sought relief under this provision
with reference to a number of grounds to be found in s 10 of
the Act:
‘
The following marks . . . if
registered, shall . . . be liable to be removed from the register:
(1) A mark which does not
constitute a trade mark;
(2) a mark which—
(a) is not capable of
distinguishing within the meaning of section 9; or
(b) consists exclusively of a
sign or an indication which may serve, in trade, to designate the
kind . . . or other characteristics
of the goods or services . . .;
or
(c) consists exclusively of a
sign or an indication which has become customary in the current
language or in the bona fide and established
practices of the trade;
. . .
(5) a mark which consists
exclusively of the shape, configuration, colour or pattern of goods
where such shape, configuration, colour
or pattern is necessary to
obtain a specific technical result, or results from the nature of the
goods themselves;
. . .
(11) a mark which consists of a
container for goods or the shape, configuration, colour or pattern of
goods, where the registration
of such mark is or has become likely to
limit the development of any art or industry;
. . .
Provided that a mark shall not
be refused registration by virtue of the provisions of paragraph (2)
or, if registered, shall not be
liable to be removed from the
register by virtue of the said provisions if at the date of the
application for registration or at
the date of an application for
removal from the register, as the case may be, it has in fact become
capable of distinguishing within
the meaning of section 9 as a result
of use made of the mark.’
[6] Smit J, in a comprehensive judgment, dealt with all the grounds
raised and upheld all Triomed’s contentions although they were
separate and distinct grounds of objection. He gave the impression
(at 544I-J) that he had regard to their cumulative effect but
it is
clear from the judgment as a whole that he dealt with each ground
separately. In any event, more often than not the evidence
on one
ground was relevant in relation to another ground. In view of my
conclusion that the appeal stands to be dismissed, I do
not intend to
canvass the whole area as did the learned Judge but my failure to
deal with any particular issue should not be seen
as either approval
or disapproval of his judgment.
[7] The learned Judge
8
relied heavily upon the judgment of Aldous LJ in
Philips
Electronics NV v Remington Consumer Products Ltd
[1999] RPC 809
(CA), herein called ‘
Philips II
’. It was an appeal from
Philips I
.
Philips II
referred a number of questions
to the European Court of Justice (the ‘ECJ’) which has since
answered them in
Koninklijke Philips Electronics NV v Remington
Consumer Products Ltd
(‘
Philips III
’).
9
Philips III
differed from
Philips I
and
II
in
material respects and the basis of the judgment in the Court below
has consequently to be revisited. These judgments all have
persuasive force because s 10 of the Act is based upon the First
Council Directive 89/1988 of the Council of the European Communities
‘To approximate the laws of the Member States relating to trade
marks’.
10
The British Trade Marks Act
(1994 Ch 26)
had to conform to the
Directive and its interpretation by the ECJ binds the English courts.
This does not mean that we are bound
to follow these authorities nor
does our diluted Dutch legacy require of us to submit meekly to a
Philips dynasty. The Act remains
a South African statute, which must
be interpreted and applied in the light of our law and circumstances.
Local policy considerations
may differ from those applicable in
Europe. The application of rules remains, even in Europe, a matter
for local courts and they
differ occasionally amongst themselves.
[8]
Does the shape mark constitute a trade mark under s 10(1)?
A sign capable of being represented graphically and consisting of a
shape or configuration falls within the definition of ‘mark’
in
the Act (s 2 sv ‘mark’). (The position under the repealed Trade
Marks Act 62 of 1963 was different because it did not permit
the
registration of shapes or configurations as trade marks.) A ‘trade
mark’ (other than a certification trade mark or a collective
trade
mark) –
‘
means
a mark used or proposed to be used by a person in relation to goods
or services for the purpose of distinguishing the goods
or services
in relation to which the mark is used or proposed to be used from the
same kind of goods or services connected in the
course of trade with
any other person.’
The function of a trade mark, in terms of the definition, is to
indicate the origin of the goods or services. The protection granted
to a trade mark by s 34(1) and its secondary commercial functions, on
the other hand, extend beyond the ‘badge of origin’ concept.

This development, in common-law countries, is in no small measure due
to the seminal work of Frank I Scheckter ‘The Rational Basis
of
Trade Mark Protection’
[1927] 40
Harvard Law Review
813.
11
The question under s 10(1) nevertheless remains a ‘badge of
origin’ inquiry.
12
[9] In essence, the test is whether
Beecham used or proposed to use the shape of the tablet ‘for the
purpose of distinguishing’
it from tablets sold by others or
whether the function of the shape is to distinguish these tablets
from other tablets.
[10] In the
Philips
judgments
the courts were concerned with a trade mark relating to the shape of
an electric shaver. Philips, under the trade mark
‘Philishave’
had for many years sold a three headed rotary shaver in which the
heads were arranged in a triangular pattern which
projected slightly
above a triangular base plate. Later it obtained a trade mark for
the shape of the shaver head. The shaver is
very popular and the
public recognises a Philishave from the shape of its head. The
shape is functional and the protection of
such designs as trade marks
was historically an anathema. In answer to a question put to it in
Philips II
, the ECJ held –
‘
that
there is no class of marks having a distinctive character by their
nature or by the use made of them which is not capable of
distinguishing.’
(
Philips III
par 39). This
means that the question whether a mark constitutes a trade mark as
defined is a factual matter and should be approached
without any
a
priori
disqualification or classification. Functionality
per
se
is no disqualification.
[11] The Court below held that the
pictorial representation of the mark is vague and does not have the
required degree of certainty
for the public to know the extent of the
monopoly claimed (at 539D-F). The vagueness is aggravated by the use
of the adverb ‘substantially’
in the registration. Beecham’s
answer is that since the field is crowded, the scope of its monopoly
should be interpreted restrictively
to relate to identical tablets
only. The limitation falls easily from counsel’s lips because
Triomed’s tablets are designed
to be identical to Beecham’s, but
the meaning of ‘substantially’ and ‘identical’ is not the
same. It is not clear whether
an objection based upon (to borrow
patent law terminology) ‘insufficiency’ or ‘ambiguity’ can
properly be brought under s
10(1). In any event, there can be no
inherent objection to a trade mark registration relating to a
substantially oval and bi-convex
tablet. Whether such a mark is
distinctive is another matter because, conceptually, the question
whether a mark is capable of distinguishing
within the meaning of s 9
is an issue different, though not always separate, from the one now
under consideration. Since vagueness
affects the distinctiveness of
a mark, Beecham may have to face the music if the trade mark is
‘insufficient’ or ‘ambiguous’.
[12] Triomed argued that the mark is
not a trade mark because Beecham has not used it as such: Beecham at
no time promoted, marketed
or sold Augmentin with reference to its
shape; the package insert does not refer to this trade mark but does
refer to the Augmentin
trade mark; no reference is made to the shape
of the tablet in any promotional material; and no reference is made
to the shape of
the product in Beecham’s sales manual.
[13] Beecham’s counter is that this
approach reduces the inquiry as to whether a mark is a trade mark to
a subjective inquiry whereas
it, properly, is an objective one. One
has to agree that the question cannot be purely subjective because it
would mean that if
someone uses or wishes to use a mark as a trade
mark, the mark is
ipso facto
a trade mark. Whether the
converse is true is a question that, due to the paucity of argument,
can best be left for another day.
Triomed’s argument that Beecham
has failed to use the shape of the tablet as a trade mark may
arguably confuse or conflate the
requirements for a trade mark with
the provision that a trade mark, which is not used, may be removed
from the register (s 27).
[14] Beecham relied upon market
survey evidence in order to determine the level of recognition of the
Augmentin shape by pharmacists.
This evidence is of particular
importance to Beecham’s case as a whole and it would be useful to
consider it at this juncture.
Augmentin tablets with the registered
shape come in two dosage sizes: 375 and 625mg active ingredients
although, since they contain
excipients, they weigh respectively
686,22 and 1120,33mg.
13
These have been on the market since the mid 1970’s and Augmentin is
one of the most commonly prescribed pharmaceuticals. In conducting
the market survey, a number of randomly selected pharmacists were
shown a 375 mg Augmentin tablet stuck to a board, thereby covering
the word mark. The exercise was repeated with a 375 mg Augmaxcil
tablet with another group of pharmacists. Both groups were asked
the
same question: ‘Can you please tell me the name of this
antibiotic?’ It is not necessary to go into detail but it can be
accepted that the interviewees overwhelmingly identified both tablets
as Augmentin. This response, according to Beecham’s argument,
establishes that the relevant sector of the public regards the shape
as something used by Beecham (in the words of the definition
of
‘trade mark’) to distinguish its goods from those of its
competitors in the course of trade.
[15] The Court below was not prepared
to have regard to the results of the survey, principally on the
ground that the wrong question
had been asked (at 537B-C). I agree.
The 375 mg Augmentin tablet is not the registered trade mark. (One
wonders immediately why
the exercise was not conducted with the 625
mg tablet. Are there too many tablets on the market of that size
with a similar shape?)
The interviewees should have been shown the
mark as registered. I am satisfied that in such event they would have
replied with less
confidence. Pharmacists do not buy or dispense
drugs by way of shape. To show a pharmacist one of the most
dispensed tablets would
invariably have led to its recognition by
form. But that does not answer the question posed earlier, namely
whether Beecham used
or proposed to use the shape of the tablet ‘for
the purpose of distinguishing’ it from tablets sold by others or to
distinguish
these tablets from other tablets.
14
Another, albeit similar, approach would be to ask whether any
pharmacist would regard the shape alone as a guarantee that the
tablet
was produced by Beecham.
15
As Jacob J pithily remarked in
British Sugar PLC v James
Robertson & Sons Ltd
[1996] RPC 281
(Ch D) 302:
‘
There
is an unspoken and illogical assumption that “use equals
distinctiveness”.’
He also quoted Lord Russell, speaking
about word marks (the principle applies to every kind of mark) in
The
Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd
[1938]
55 RPC 125
(PC) 145:
‘
A
word or words to be really distinctive of a person’s goods must
generally speaking be incapable of application to the goods of
anyone
else.’
[16]
Is the mark, in terms of s
10(2)(a) capable of distinguishing within the meaning of s 9?
Section 9 provides as follows:
‘
(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.’
[17] In considering a similar attack
under the equivalent British provision,
Philips II
16
held that the fact that a trade mark, by use, has become such as to
denote goods of a particular provenance, does not necessarily
mean
that it is capable of distinguishing those goods in the trade mark
sense. The more a trade mark is descriptive of the goods,
the less
likely it will be capable of distinguishing them in this sense.
Aldous LJ therefore concluded that if a trade mark is primarily
descriptive it requires ‘sufficient capricious alteration’ to
enable it to perform a trade mark function.
[18] The question whether the shape
of an article could only be capable of distinguishing if it contains
some capricious addition,
such as an embellishment, which has no
functional purpose was then submitted to the ECJ, which held as
follows
(
Philips III
par 47-50):
‘
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
three-dimensional 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 s 9. This 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 s 9 read with the proviso to s 10 is
done 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 cross-examination
–
‘
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 (s
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, bi-convex
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 from tablets sold by others
18
but distinguishes them somewhat from other tablets, and 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
pharmaceutical tablets (including antibiotics) on the market with the
identical or substantially identical shape, albeit
not necessarily
with the same size as Augmentin. I realise that some of these were
introduced after registration, but others were
not. Both categories
are admissible to decide whether, since the application date, the
mark through use has become capable of distinguishing
under the
proviso to s 10.
19
[25] This conclusion is consistent
with the answer to the third question in
Philips III
par 65:
‘
[W]here
a trader has been the only supplier of particular goods to the
market, extensive use of a sign which consists of the shape
of those
goods
may be sufficient
to give the sign a distinctive
character for the purposes of Article 3(3) of the Directive in
circumstances where, as a result of
that use, a substantial
proportion of the relevant class of persons
associates that shape
with that trader
and no other undertaking or believes that goods
of that shape come from that trader. However, it is for the national
court to verify
that the circumstances in which the requirement under
that provision is satisfied are shown to exist on the basis of
specific and
reliable data, that the presumed expectations of an
average consumer of the category of goods or services in question,
who is reasonably
well-informed and reasonably observant and
circumspect, are taken into account and that the identification, by
the relevant class
of persons, of the product as originating from a
given undertaking is
as a result of the use of the mark as a trade
mark
.’
(Emphasis added.)
[26] Finally on this point Beecham
fell back on the aphorism ‘what is worth copying is
prima facie
worth protecting’,
20
submitting that Triomed’s supplier’s conscious copying of the
Augmentin tablet’s form indicates that the form must have trade
mark value. Aphorisms can be dangerous and in any event, it requires
some genetic engineering in order to adapt an aphorism applicable
to
a particular copyright problem to trade mark law. It would negate
one of the foundations of the free market system.
21
[27]
Does the mark in terms of s
10(5) consist exclusively of the shape of goods where such shape is
necessary to obtain a specific technical
result?
The mark no
doubt consists exclusively of the shape of a tablet and the remaining
issue is whether the shape is necessary to obtain
a specific
technical result. This raised two questions in
Philips II
:
First, does this mean that such a sign falls foul of s 10(5) if the
essential functional features of the shape are attributable
only to
the technical result, and, second, does s 10(5) apply if there are
other shapes which can obtain the same technical result?
[28]
Philips III
gave the
answer in these terms (par 84):
‘
[The
provision] must be interpreted to mean that a sign consisting
exclusively of the shape of a product is unregistrable by virtue
thereof if it is established that the essential functional features
of that shape are attributable only to the technical result.
Moreover, the ground for refusal or invalidity of registration
imposed by that provision cannot be overcome by establishing that
there are other shapes which allow the same technical result to be
obtained.’
The ECJ reasoned that the various
grounds for refusal of registration must be interpreted in the light
of the public interest underlying
each of them (par 77) and that the
rationale underlying (amongst other) this ground (par 78) –
‘
is
to prevent trade mark protection from granting its proprietor a
monopoly
on technical solutions or functional characteristics of a
product which a user is likely to seek in the products of
competitors
. Article 3(1)(e) [of the Directive, which includes
the ground under consideration] is thus intended to prevent the
protection conferred
by the trade mark right from being extended,
beyond signs which serve to distinguish a product or service from
those offered by competitors,
so as to form an obstacle preventing
competitors from freely offering for sale products incorporating such
technical solutions or
functional characteristics in competition with
the proprietor of the trade mark
.’
(Emphasis added.) The intention
underlying this particular ground is (par 79) –
‘
to
preclude the registration of shapes whose essential characteristics
perform a technical function, with the result that the exclusivity
inherent in the trade mark right would limit the possibility of
competitors supplying a product incorporating such a function or
at
least limit their freedom of choice in regard to the technical
solution they wish to adopt in order to incorporate such a function
in their product.’
[29] The evidence establishes that
the oval shape is important for the ease and safety of swallowing
especially larger tablets. Patients
do not readily accept large
round tablets. A recent press release by Schering Laboratories deals
with a problem patients experienced
swallowing round-shaped tablets.
Many of them required medical assistance to remove the tablet.
Schering in consequence developed
a new oval-shaped tablet ‘more
similar in size, shape and coating to a variety of other medications
that have been used safely
around the world.’ The bi-concave shape
facilitates the coating of the tablet and the ‘band’ (the area
between the two convexities)
prevents the tablet from crumbling.
[30] Beecham nevertheless argued that
s 10(5) does not apply to the facts under consideration because the
function of the tablet is
to act as an antibiotic and that the shape
of the tablet has nothing to do with curing infections. The argument
is without any merit.
The provision is concerned with the question
of whether the registered shape is necessary to obtain a specific
technical result.
Shape, in this case, is necessary for ease of
swallowing, coating and the prevention of crumbling. The fact that
other shapes may
also attain these results is, as we have seen,
beside the point. It follows that the choice of this shape provides
a reasonable
technical solution to a problem and that the
registration of the mark was consequently contrary to the provisions
of s 10(5) and
also (11) because the registration of the shape is
likely to limit the development of the relevant art.
[31] The appeal is dismissed with
costs, including the costs of two counsel.
____________________
L T
C HARMS
JUDGE
OF APPEAL
SCOTT
JA )Concur
MPATI JA )
CONRADIE
JA )
JONES
AJA )
1
It is unnecessary to distinguish between the appellants and I will
conjoin them under the name ‘Beecham’.
2
Biotech Laboratories (Pty) Ltd v Beecham Group plc and Another
2002 (4) SA 249
(SCA).
3
Triomed (Pty) Ltd v Beecham Group plc and Others
2001 (2) SA
522
(T).
4
Philips Electronics BV v Remington Consumer Products
[1998]
RPC 283
310 (I will refer to this judgment as
Philips I
).
5
Cf
Dexion Europe Ltd v Universal Storage Systems (Pty) Ltd
6
September 2002 Case 500/2000 (SCA) unreported.
6
Agriplas (Pty) Ltd v Andrag & Sons (Pty) Ltd
1981 (4) SA
873 (C).
7
Trade Marks Act 194 of 1993
s 24(1).
8
">
8
At 532C-D, 533D-E and 538C-539B.
9
Delivered on 18 June 2002. The judgments of the ECJ can be found at
http://www.curia.eu.int.
10
To be found at
http://oami.eu.int/en/aspects/direc/direc.htm
.
The important provisions of the directive relevant to this case are
quoted:
Art 2: ‘A trade mark
may consist of any sign capable of being represented graphically,
particularly words, including personal
names, designs, letters,
numerals, the shape of goods or of their packaging, provided that
such signs are capable of distinguishing
the goods or services of
one undertaking from those of other undertakings.’
Art 3 (1): ‘The
following shall not be registered or if registered shall be liable
to be declared invalid:
signs which cannot
constitute a trade mark;
trade marks which
are devoid of any distinctive character;
trade marks which
consist exclusively of signs or indications which may serve, in
trade, to designate the kind, quality, quantity,
intended purpose,
value, geographical origin, or the time of production of the goods
or of rendering of the service, or other
characteristics of the
goods;
trade marks which
consist exclusively of signs or indications which have become
customary in the current language or in the bona
fide and
established practices of the trade;
signs which consist
exclusively of:
the shape which results from the nature of the goods
themselves, or
the shape of goods which is necessary to obtain a
technical result, or
the shape which gives substantial value to the goods
. . . .’
11
Tony Martino
Trademark Dilution
(Oxford University Press,
1996).
12
Cf
Valentino Globe BV v Phillips and Another
[1998] ZASCA 43
;
1998 (3) SA 775
(SCA) 782I-J.
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc
[1999] RPC 117
(ECJ) par 28: ‘Moreover, according to the settled
case-law of the Court, the essential function of the trade mark is
to guarantee
the identity of the origin of the marked product to the
consumer or end user by enabling him, without any possibility of
confusion,
to distinguish the product or service from others which
have another origin. For the trade mark to be able to fulfil its
essential
role in the system of undistorted competition which the
Treaty seeks to establish, it must offer a guarantee that all the
goods
or services bearing it have originated under the control of a
single undertaking which is responsible for their quality (see, in
particular, Case C-10/89
HAG GF (HAG II)
[1990] ECR I-3711
,
paragraphs 14 and 13).’
13
Beecham more recently introduced a 1000mg tablet, which, it alleges,
has a shape different from the registered trade mark. Save
for a
break line, it seems to me to be substantially oval and bi-convex.
If it is different, one wonders why Beecham wishes to
sell Augmentin
in two shapes if the shape performs a trade mark function.
14
Cf in a passing-off context
Roche Products Ltd and Another v Berk
Pharmaceuticals Ltd
[1973] RPC 473
(CA) 484 line 14-19.
15
Cf
Canon
par 28 quoted earlier.
16
At 817-818 cited by Smit J at 538C-539B.
17
British Sugar PLC v James Robertson & Sons Ltd
[1996] RPC
281
(Ch D) 305-306.
18
The facts in
Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd
1977 (4) SA 434
(W) 437-438 provide a good illustration of the same
point in the context of passing-off at a stage when shapes were not
eligible
for trade mark registration.
19
This distinguishes
Luster Products Inc v Magic Style
Sales CC
1997 (3) SA 13
(A) 22A-26D.
20
University of London Press Ltd v Universal Tutorial Press Ltd
[1916] 2 Ch 601
at 610 quoted in
Payen Components SA Ltd v Bovic
CC and Another
[1995] ZASCA 57
;
1995 (4) SA 441
(A) 452D-E.
21
Cf
Taylor & Horne (Pty) Ltd v Dentall (Pty) Ltd
1991 (1)
SA 412
(A) 422B-E;
Cadbury (Pty) Ltd v Beacon Sweets &
Chocolates (Pty) Ltd and Another
[2000] ZASCA 2
;
2000 (2) SA 771
(SCA) 781B-C.