Dart Industries Incorporated and another v Botle Buhle Brands (Pty) Ltd and another

Jurisdictionhttp://justis.com/jurisdiction/166,South Africa
JudgeDambuza JA, Makgoka JA, Gorven JA, Goosen AJA and Masipa AJA
Judgment Date01 December 2022
CourtSupreme Court of Appeal
Hearing Date06 September 2022
Docket Number636/2021

Makgoka JA (Dambuza JA, Makgoka JA, Gorven JA, Goosen AJA and Masipa AJA concurring):

[1]

This is a trade mark dispute about a shape of a water bottle. In the Gauteng Division of the High Court, Pretoria (the high court), the appellants sought to interdict the first respondent from infringing their registered trade mark for a water bottle. In turn the first respondent, counter-applied for the cancellation of registration of the trade mark. The high court granted the first respondent's counter-application and ordered the cancellation of the mark. Consequently, it found it unnecessary to decide the infringement issue. The high court also dismissed the appellants' claim based on passing-off. The appeal is with the leave of the high court.

[2]

The first appellant, Dart Industries Incorporated, and the second appellant, Tupperware Southern Africa (Pty) Ltd, are part of the Tupperware group of companies, with Tupperware Brands Corporation, a United States of America (USA) entity, as the ultimate holding company. The first appellant develops and manufactures a range of products which includes plastic preparation, storage, kitchen, and home serving products under the well-known trade mark, Tupperware. The second appellant is its South African representative and the licensee of its intellectual property rights in this country. It also manufactures and sells Tupperware products in South Africa.

[3]

The first appellant is the registered proprietor of South African trade mark registration no 2015/25572 ECO BOTTLE in class 21, with the effective date of the trade mark as 10 September 2015. The mark is registered for 'household containers; kitchen containers; water bottles sold empty; insulated bags and containers for domestic use; beverage ware; drinking vessels.' It is endorsed as consisting of 'a container for goods', and its representation in the trade marks register is as follows:

2022 JDR 3629 p4

Makgoka JA (Dambuza JA, Makgoka JA, Gorven JA, Goosen AJA and Masipa AJA concurring)

20223629p4a

[4]

It is convenient to refer to the first and second appellants jointly as 'Tupperware'. Since 2011, Tupperware has been selling a plastic bottle that has the shape of the registered mark, and marketed as the 'Eco bottle', in South Africa. In 2019, the first respondent, Botle Buhle Brands (Pty) Ltd (Buhle Brands), a South African company that sells 'homeware, cosmetics, toiletries, health and wellness, and fashion products,' started to market and sell the allegedly infringing water bottle. Here is the depiction of Buhle Brands' bottle:

20223629p4b

[5]

Tupperware considered the Buhle Brands' bottle to infringe its registered trade mark. Accordingly, it applied to the high court seeking to restrain Buhle Brands from infringing its registered mark in terms of ss 34(1)(a) and 34(1)(c) of the Trade Mark Act 194 of 1993 (the Act). In addition, Tupperware sought a restraining order based on passing off. In response, Buhle Brands launched a counter-application for the

2022 JDR 3629 p5

Makgoka JA (Dambuza JA, Makgoka JA, Gorven JA, Goosen AJA and Masipa AJA concurring)

removal of Tupperware's trade mark registration based on several sections of the Act, namely: (a) s 10(2)(a) - that it was not capable of distinguishing Tupperware goods from those of other traders and was therefore, an entry wrongly made and/or wrongly remaining on the trade mark register in terms of s 24 of the Act; (b) s 10(4) - that the mark was registered without any intention of using it as such in relation to the goods for which it was registered; (c) s 10(11), the mark was likely to limit the development of any art or industry; and (d) s 27(1)(a) - that there was no bona fide intention to use the mark in relation to Tupperware's goods.

[6]

In the end, the high court decided the matter on the basis of the first ground, ie s 10(2)(a). Section 10, titled 'Unregistrable trade marks', provides a list of unregistrable marks. If such a mark is registered, it shall be liable to be removed from the register. One such mark is one which 'is not capable of distinguishing within the meaning of section 9,' which provides as follows in sub-section 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.'

[7]

The high court found that the registered trade mark was neither inherently distinctive nor had acquired distinctiveness as a result of prior use, as envisaged in s 9(2). Consequently, it dismissed Tupperware's application and granted Buhle Brands' counter application for the removal of Tupperware's trade mark from the trade mark register. This finding made it unnecessary for the high court to decide the infringement issue, or Buhle Brands' grounds for removal based on ss 10(4), 10(11), and 27(1)(a). As regards the relief based on passing off, the high court found that although the bottles were virtually identical, there was no likelihood of deception or confusion, given the sales model used by both parties.

[8]

Like the high court, I find it convenient to consider first, whether the shape of Tupperware's Eco bottle as a mark is liable to be removed from the register in terms of s 10(2)(a) as being incapable of distinguishing within the meaning of s 9(2). The latter section provides as follows:

2022 JDR 3629 p6

Makgoka JA (Dambuza JA, Makgoka JA, Gorven JA, Goosen AJA and Masipa AJA concurring)

'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.'

[9]

Thus, the sub-section provides for two forms of distinctiveness: inherent distinctiveness and acquired distinctiveness. A mark is inherently distinctive if, by its very nature, it identifies the goods or services in relation to which registration has been applied for as originating from a particular undertaking, and thus distinguishing those goods or services from goods or services of other undertakings. As regards acquired distinctiveness, a mark that is not inherently distinctive can acquire distinctiveness by reason of prior use.

[10]

As explained in Beecham v Triomed [1] (Beecham), the enquiry envisaged in subsection 9(2) is a factual one, which is done in two stages. The first is whether the mark, at the date of application for registration, was inherently capable of distinguishing the goods of one trader from those of another person. [2] 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. [3] Whether a mark possesses inherent or acquired distinctiveness is a question of fact that must be determined with regard to all the circumstances of each case. The relevant circumstances include 'the nature of the mark and of the goods or services, the industry in which the mark is used', and, 'the perception of the average consumer in that industry.' [4]

[11]

Was Tupperware's mark inherently distinctive? To answer this question, it is well to bear in mind that the function of a trade mark is to indicate the origin of the goods or services. [5] Thus, the public perception of a shape mark is crucial. In Beecham this Court accepted that members of the public must regard the shape of the particular goods as a guarantee of the source of those goods. This would be the case where a

2022 JDR 3629 p7

Makgoka JA (Dambuza JA, Makgoka JA, Gorven JA, Goosen AJA and Masipa AJA concurring)

shape is markedly unique or extensively used. There are two instances here: on the one hand, the public might simply recognise a product by its shape. This is not sufficient for the shape to play the role of a trade mark. On the other, the public might rely on the distinctiveness of the shape as an indicator of the source of goods. It is the latter instance that denotes the shape as a trade mark.

[12]

In terms of s 2(1) of the Act, a 'mark' is defined as 'any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned'. Thus, it is permissible to register a shape as a trade mark. In Bergkelder Bpk v Vredendal Koop Wynmakery [6] (Bergkelder) this Court considered a trade mark dispute about a container mark in the form of a wine bottle. It was pointed out that shape and container marks 'do not differ from any other kind of trade mark', and that 'the criteria for assessing their distinctive character . . . are no different from those applicable to other categories of trade mark.' [7] However, 'from a practical point of view they stand on a different footing' [8] because 'average consumers are not in the habit of making assumptions' about the origin of products based on shapes. [9]

[13]

Emphasising the weakness of shape marks as indicators of origin, the Court referred to a passage in Bongrain SA's Trade Mark Application [2005] RPC 14, where Jacob LJ said:

'. . . [t]he kinds of sign which may be registered fall into a kind of spectrum as regards public perception. This starts with the most distinctive forms such as invented words and fancy devices. In the middle are things such as semi-descriptive words and devices. Towards the end are shapes of containers. The end would be the very shape of the goods. Signs at the beginning of the spectrum are of their very nature likely to be taken as put on the goods to tell you who made them . . . But, at the very end of the spectrum, the shape of goods as such is unlikely to convey...

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