Beecham Group plc and Another v Triomed (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Harms JA, Scott JA, Mpati JA, Conradie JA and Jones AJA
• Judgment Date: 19 September 2002
• Docket Number: 100/2001
• Hearing Date: 03 September 2002
• Counsel: C E Puckrin SC (with him J N Cullabine) for the appellants. L G Bowman SC (with him G E Morley) for the respondent.
• Court: Supreme Court of Appeal

Harms JA: A

[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 trade mark Augmentin. [2] On this occasion Beecham wishes us B 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 C 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 D 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 E 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 F 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 G 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 H 193 of 1993 introduced design protection for them on lines similar

Harms JA

to that for aesthetic designs. They did not have protection against passing-off [6] and could not A 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 B 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 C 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 D 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 (ie elliptical and not egg-like) shape. Beecham's package insert calls it 'oval' and the draughtsman I of the drawing above

Harms JA

refers to the tablet as oval and the tablet shape as convex. It is not without significance to note that the mark is not A 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 B 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 - C

(a)

is not capable of distinguishing within the meaning of s 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; D

. . .

(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; E

. . .

(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 para (2) or, if registered, shall not be liable to be F 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 s 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 G 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 H 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 I Remington Consumer Products Ltd [1999] RPC 809 (CA), herein called 'Philips II'. It was an appeal from Philips I. Philips

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II referred a number of questions to the European Court of Justice (the 'ECJ') which has since answered them A 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 '(t)o approximate the laws of the B 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 C 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. D

[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 E 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'. F

Harms JA

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 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...