Cointreau et Cie SA v Pagan International

• Jurisdiction: South Africa

Cointreau et Cie SA v Pagan International
1991 (4) SA 706 (A)

1991 (4) SA p706

Citation	1991 (4) SA 706 (A)
Court	Appellate Division
Judge	Corbett CJ, Nestadt JA, Goldstone JA, Nicholas AJA and Van Den Heever AJA
Heard	August 15, 1991
Judgment	August 29, 1991

Flynote : Sleutelwoorde B

Trade and trade mark — Trade mark — Infringement — Container mark — Mark as registered forming the basis of comparison to be made for C purpose of determining whether infringement has taken place — Where container a bottle and mark as registered depicted only in two dimensions, Court not entitled to have regard to container actually used to market goods.

Trade and trade mark — Trade mark — Infringement — Container mark — Trade Marks Act 62 of 1963, s 10(2) — Qualification in s 10(2) that D registration of mark not preventing bona fide use of any utilitarian or functional feature embodied in container — Appellant's trade mark in respect of a square, brown bottle for liqueur and only similarities with respondent's bottle lay in its colour, general shape and proportions — Evidence showing that brown, squat rectangular bottles commonly used in E liqueur trade — In circumstances no possibility that consumer would be deceived or confused — Court holding that in any event colour, shape and general proportions were primarily utilitarian or functional features and the only distinctive feature of the appellant's bottle was a boss on the shoulder of the bottle which was absent from the F respondent's bottle — Appellant therefore precluded by provisions of s 10(2) from claiming infringement of mark.

Headnote : Kopnota

The appellant, a manufacturer of liqueurs and alcoholic beverages, obtained the registration of a trade mark in South Africa in terms of the Trade Marks Act 62 of 1963 in respect of a container for its orange liqueur, 'Cointreau'. The respondent, an importer of wines, spirits and G liqueurs, commenced distributing in South Africa in 1967 an orange-based liqueur called 'Alianca Triplice', manufactured in Portugal and marketed in a bottle whose shape had remained the same since 1927. The appellant contended that the respondent's use of the Alianca bottle was an unlawful infringement of its registered trade mark and claimed in a Provincial Division an interdict restraining such user. The Court dismissed the application. The appellant relied on a certified extract H of the trade mark register which portrayed only one aspect of a squat, rectangular, brown glass bottle. On the shoulder of the bottle and situated centrally there was a prominent protrusion in the form of an oval boss carrying the word 'Cointreau'. The Court held on appeal that in the case of a container mark it was important that the registered mark be represented in a three-dimensional manner and in the present case, where all that had been registered was a two-dimensional photograph, the Court was not entitled to look at an embodiment thereof I as used in trade as it was the mark as registered which delineated the proprietor's monopoly and formed the basis of the comparison which had to be made when it was alleged that there had been an infringement.

As to the infringement, the Court held that in terms of s 10(2) of the Act, which provided that no registration of a container as a trade mark prevented the bona fide use by others of any utilitarian or functional feature embodied in such container, a distinction had to be drawn between those features of the container in question which were J utilitarian and those which were not. Drawing on the American case law

1991 (4) SA p707

A in this regard, the Court was of the opinion that the issue as to whether the feature was functional or utilitarian or not was often a question of degree, which was determined on the basis of whether it served primarily or predominantly or essentially a functional or utilitarian purpose or not.

Although because of the incomplete depiction of the registration the Court was in the dark as to what the shape of the registered bottle was, it was prepared to assume for the purposes of the judgment that the other sides of the bottle were the same as the front except for the boss B or seal. The evidence was to the effect that liqueurs were expensive and appealed to the more educated and sophisticated sections of the community who were discerning, brand-conscious buyers. It appeared further that liqueurs were generally marketed in a bottle with a dark-coloured glass and that rectangular shaped bottles were commonly used in the spirit and liqueur trades and as such were not distinctive of particular brands. The Court was of the opinion that the only situation where there was a possibility of deception or confusion was on the shelf of a liquor supermarket, but, bearing in mind that the C purchaser of liqueurs was an educated, sophisticated and discerning person who was also brand-conscious, there was no likelihood of such person being induced by respondent's use of the Alianca bottle into thinking that the liqueur emanated from the proprietor of the Cointreau mark or that there was a material connection between them. The Court held that in any event the features which were common to the two bottles, viz colour, shape and general proportions, were primarily D utilitarian features used bona fide by the respondent and that therefore appellant was prevented by the provisions of s 10(2) of the Act from claiming infringement of its mark. The only non-utilitarian features, viz the seal or boss, was not reproduced on the Alianca bottle. Appeal dismissed.

The decision in the Transvaal Provincial Division in Cointreau et Cie SA v Pagan International confirmed. E

Case Information

Appeal from a decision in the Transvaal Provincial Division (MacArthur J). The facts appear from the judgment of Corbett CJ.

B R Southwood SC (with him B Ginsburg) for the appellant referred to the following authorities: Tri-ang Pedigree (South Africa) (Pty) Ltd v Prima Toys (Pty) Ltd 1985 (1) SA 448 (A) at 466G-H; Berman Brothers F (Pty) Ltd v Sodastream Ltd and Another 1986 (3) SA 209 (A) at 235F-G, 236F-I; Webster and Page South African Law of Trade Marks 3rd ed at 1, 261, 288, 452-6, 572; Miele et Cie GmbH & Co v Euro Electrical (Pty) Ltd 1988 (2) SA 583 (A) at 594F-595B; Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 634H; Homecraft Steel Industries (Pty) Ltd v S M Hare & Son (Pty) Ltd and Another 1984 (3) SA 681 (A) at 694I; Source Perrier Société Anonyme v Canada Dry Ltd (1982) G 64 CPR 116 at 120-1; John Haig & Co Ltd v Forth Blending Co Ltd [1952] 69 RPC 323; adidas Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd 1976 (1) SA 530 (T) at 535H; International Power Marketing (Pty) Ltd v Searles Industrials (Pty) Ltd 1983 (4) SA 163 (T) at H 165G-H; Metal Box South Africa Ltd v Midpak Blow-Moulders (Pty) Ltd 1988 (2) SA 446 (T) at 451D-J; Agriplas (Pty) Ltd and Others v Andrag & Sons (Pty) Ltd 1981 (4) SA 873 (C) at 878H-879E, 880A-B, 882-3, 884F-H; Van Heerden and Neethling Onregmatige Mededinging at 145-6 and note 58; Esquire Electronics Ltd v Executive Video 1986 (2) SA 576 (A) at 590C-D; Benchairs Ltd v Chair Centre Ltd [1974] RPC 429 at 435-6; I Steyn Die Uitleg van Wette 5th ed at 97-100; 'Trade Mark Protection of Container and Package Configurations - A Primer' (1983) 59 Chicago-Kent Law Review at 799-80; McCarthy Trade Marks and Unfair Competition 2nd ed vol 1 at 240; Callmann Unfair Competition, Trade Marks & Monopolies 3rd ed para 16.2 at 525, para 16.2(a) at 527, para 16.2(d) at 528, para J 71.4, para 77.4(e)

1991 (4) SA p708

A at 385-9; Bank of Lisbon & South Africa Ltd v De Ornelas and Another 1988 (3) SA 580 (A) at 607A-B; Laws v Rutherfurd 1924 AD 261 at 263; Hepner v Roodepoort-Maraisburg Town Council 1962 (4) SA 772 (A) at 778F-779A; Borstlap v Spangenberg en Andere 1974 (3) SA 695 (A) at 704F-H; Feinstein v Niggli and Another 1981 (2) SA 684 (A) at 689E-H; B Traub v Barclays National Bank Ltd 1983 (3) SA 619 (A) at 634G-635D; Zuurbekom Ltd v Union Corp Ltd 1947 (1) SA 514 (A) at 536-7; Mahabeer v Sharma NO and Another 1985 (3) SA 729 (A) at 736H-I; Image Enterprises CC v Eastman Kodak Co and Others 1989 (1) SA 479 (T); Aris Enterprises Finance (Pty) Ltd v Protea Assurance Co Ltd 1981 (3) SA 274 (A) at 291; Blackie Swart Argitekte v Van Heerden 1986 (1) SA 249 (A); Universal C Stores Ltd v OK Bazaars (1929) Ltd 1973 (4) SA 747 (A) at 761; Alfred McAlpine & Son (Pty) Ltd v Transvaal Provincial Administration 1977 (4) SA 310 (T) at 335; Policansky Bros v Hermann & Canard 1910 TPD 1265 at 1278; Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers (Pty) Ltd 1974 (2) SA 125 (C) at 137; Electrolux Ltd v Electrix Ltd and Another 1954 RPC 23; Collen v Rietfontein Engineering Works 1948 (1) SA 413 (A) at 422. D

C E Puckrin SC (with him A B S Franklin) for the respondent referred to the following authorities: Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A); Webster and Page South African Law of Trade Marks 3rd ed at 261; AMP Inc v Utilut Proprietary Ltd 1972 RPC 103 at 108; Swisstool Manufacturing Co v Omega Africa Plastics 1975 (4) SA 379 (W) E at 383; Allen Sherman-Hoff Co v Registrar of Designs 1935 TPD 270; Xaxtics (Pty) Ltd v Tailored Containers (Pty) Ltd 1971 (2) SA 562 (C); Brudd Lines (Pty) Ltd v Badsey (2) 1973 (3) SA 975 (T); adidas Sportschuhfabriken Adi Dassler K G v Harry Walt and Co (Pty) Ltd 1976 (1) SA 530 (T) at 535; Re Coca-Cola Co's Applications [1986] 2 All ER F 274 (HL); Miele et Cie GmbH & Co v Euro Electrical (Pty) Ltd 1988 (2) SA 583 (A); Policansky Bros v Hermann and Canard 1910 TPD 1265; Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers (Pty) Ltd 1974 (2) SA 125 (C).

Cur adv vult.

Postea (August 29). G

Judgment

Corbett CJ:

The appellant in this matter, Cointreau et Cie...