Cointreau et Cie SA v Pagan International

• Jurisdiction: South Africa
• Judge: Corbett CJ, Nestadt JA, Goldstone JA, Nicholas AJA and Van Den Heever AJA
• Judgment Date: 29 August 1991
• Hearing Date: 15 August 1991
• Court: Appellate Division

Corbett CJ:

The appellant in this matter, Cointreau et Cie SA, a French corporation with its registered office at Saint Barthelemy-d'Anjou in France, carries on business there as a manufacturer of liqueurs and other alcoholic beverages. The present chairman of appellant, Pierre H Cointreau, is a descendant of Edouard Cointreau, who in 1875 developed a distinctive orange liqueur which has since become well known throughout the world as 'Cointreau'. In about 1885 Edouard Cointreau chose a particular bottle and a label for the marketing of this liqueur and with a few minor modifications these have the same appearance as the bottle I and label presently used by the appellant (as Edouard Cointreau's successor-in-title) in the sale and distribution of Cointreau. Appellant appears to be controlled by the Cointreau family.

Cointreau was first introduced in South Africa in 1929 and up to the time when proceedings in this matter were commenced had been sold extensively through a general distributor and various retail liquor outlets in the Republic. In 1980 appellant obtained the registration in J South

Corbett CJ

A Africa, in terms of the Trade Marks Act 62 of 1963 ('the Act'), of two trade marks (Nos 80/4468 and 80/5123). Each of these marks is registered in class 33 in respect of 'spirits and liqueurs' and consists of a container for goods. In 1981 appellant obtained a further registered trade mark (No 81/0153) in class 33, for wines, spirits and liqueurs, in B respect of a label. These trade marks have reference to the bottle and the label used by appellant in the marketing of the Cointreau liqueur.

Respondent is G Pagan Enterprises (Pty) Ltd, a South African company which trades under the style of 'Pagan International' and has its place of business in Sandton, Transvaal. Respondent was incorporated in 1967 and conducts the business of, inter alia, importing wines, spirits and C liqueurs into the Republic of South Africa. It specialises in the importation of wines, spirits and liqueurs originating from Portugal. In 1967 respondent commenced importing from Portugal and distributing, as the sole distributor, in South Africa an orange-based liqueur called 'Alianca Triplice'. This liqueur is produced and bottled in Portugal by a corporation known as Caves Alianca - Vinicola de Sangalhos SA ('Caves D Alianca'). As regards the name of the liqueur, 'Alianca' is clearly derived from the name of the producer; and the word 'Triplice' signifies 'triple dry'. Caves Alianca has been producing and marketing its Alianca Triplice since 1927 in a bottle, whose shape has remained the same for the ensuing 60 years (ie up until the commencement of these proceedings), and using a bottle label which, too, has always been substantially the same. E

Towards the end of December 1987 and in the Transvaal Provincial Division appellant instituted legal proceedings by notice of motion, alleging that respondent's use of the bottle in which Alianca Triplice is marketed constituted an unlawful infringement of appellant's F registered trade marks Nos 80/4468 and 80/5123 (the container marks) and that its use of the label on the bottle constituted an unlawful infringement of its registered trade mark No 81/0153 (the label mark); and claiming an interdict restraining such user by respondent, together with certain ancillary relief. The application, which was opposed by respondent, was heard by MacArthur J. He dismissed the application with G costs, including the costs of two counsel. With the leave of this Court, appellant appeals against that portion of the order of the Court a quo which dismissed the claims of infringement based upon the two container marks. There is no appeal against the dismissal of the claim relating to the label mark.

Before considering the issue of infringement and the various H submissions advanced by counsel in regard thereto it is necessary to make more detailed reference to the facts of the case.

I turn first to the two registered container trade marks. It was conceded before us by appellant's counsel that appellant's case in regard to trade mark No 80/4468 was, if anything, stronger than that I based on trade mark No 80/5123 and that if it failed on No 80/4468 it would also fail on No 80/5123. I shall, therefore, confine my attention to the former trade mark.

Among the papers filed by appellant is a certified extract from the trade mark register pertinent to trade mark No 80/4468. The representation of the mark in the certificate consists of a colour photograph of one aspect of what appears to be a brown glass bottle. This aspect, or side, of the bottle is more or less rectangular in J shape, the height of the bottle from its

Corbett CJ

A bottom to the base of its neck being approximately twice its width. The shoulders of the bottle curve convexly and upwards towards the base of the neck which is relatively short and squat. The neck tapers slightly towards the opening and, about half-way up, the neck thickens to form what appears to be a ring. On the shoulder of the bottle and situated B centrally (on the aspect shown) there is a prominent protrusion in the form of an oval boss or seal on which can be made out (with the help of a magnifying glass) the word 'COINTREAU'. The bottle is represented without any cap or stopper. Nor does this aspect show any labels on the bottle. In the section relating to admissions, disclaimers, etc the certificate states that the mark consists of a 'container for goods' and C that the application is limited to the colour brown as shown on the representation.

Statutory provision for the registration of 'a distinctive container for goods' was first introduced by the Act (see s 2, definition of 'mark'). The earlier legislation contained no such provision, and indeed the English Trade Marks Act has no counterpart. Moreover, as recently as D 1986 the House of Lords confirmed the rejection of an application to register a bottle as a trade mark (see Re Coca-Cola Co's Applications [1986] 2 All ER 274 (HL)). In 1971 the definition of 'mark' in the Act was amended by the deletion of the word 'distinctive'. In view of the fact that containers have thus been registrable as trade marks in this E country since 1963 it is somewhat surprising that this is apparently the first case concerning a container trade mark to come before the Courts.

The other types of mark which may become the subject-matter of a registered trade mark, as listed in the definition of 'mark', are 'a device, brand, heading, label, ticket, name, signature, word, letter, F numeral or any combination thereof'. These can all be readily and properly represented for the purposes of registration in a two-dimensional manner. A container, however, is different. By its nature it is a three-dimensional object and consequently a single two-dimensional drawing or photograph cannot portray it in all its aspects and, therefore, in some instances may not give an adequate G representation of it for registration purposes. As I shall show, the present case illustrates this point.

It is clearly of great importance, both to the proprietor of the trade mark and to the general public, that the trade mark be adequately represented in the trade mark register. Regulation 13 of the Trade Mark Regulations of 1971 prescribed how a mark, other than a word mark H simpliciter, should be represented for the purpose of an application for registration and consequently for registration itself. It emphasises the need for the representation to be clear and distinct (reg 13(4)) and it provides that, where a representation cannot be given in the normal prescribed manner, a specimen or copy of the trade mark may be sent with every application either of full size or reduced scale and in such form I as the Registrar may think most convenient (reg 13(5)). Regulation 13(6) further empowers the Registrar, in exceptional cases, to call for the deposit of a specimen or copy of any trade mark that cannot...