Die Bergkelder Bpk v Vredendal Koöp Wynmakery and Others

• Jurisdiction: South Africa
• Judge: Harms JA, Streicher JA, Cameron JA, Lewis JA and Cachalia AJA
• Judgment Date: 09 March 2006
• Docket Number: 105/05
• Hearing Date: 21 February 2006
• Counsel: P Ginsburg SC (with R Michau) for the appellant. A R Sholto-Douglas SC for the respondent.
• Court: Supreme Court of Appeal

Harms JA:

[1] This appeal concerns a trade mark dispute relating to a wine bottle. The appellant sought to interdict the respondent from infringing its J

Harms JA

registered trade mark for a container for alcoholic A beverages (TM 1977/00647) and the respondent, in turn, sought to have the mark expunged. Waglay AJ, in the Cape High Court, ordered the mark to be expunged and, consequently, found it unnecessary to decide the infringement issue. The appeal is with his leave.

[2] Wine drinking is steeped in tradition and wine is usually B marketed in conventional bottles. These include the thick glass Champagne bottle used for sparkling wines, the Burgundy bottle with low shoulders, the Bordeaux bottle with its broad shoulders, the mace-shaped bottle used for Rhein and Moselle wines, the Alsace slender flute, the Chianti bulbous fiasco and, relevant for present purposes, C the so-called Bocksbeutel. By the name, hangs a tail. Translated literally from the German (though not entirely accurately) Bocksbeutel means a 'goat's pouch', which, it is said, is a humorous (according to others, vulgar) allusion to its shape. It is a short, flat, broad-bellied glass flagon or, to give another D description, a bottle with a flattened globular shape. The oldest surviving example of a Bocksbeutel is supposed to date back to 1400 BC. Originally, they were made from leather or wood. As many a shepherd or soldier could have testified, it is easier to carry a flat hipflask against the body than a round one. These bottles have been in constant use by Franconian vintners for at least 500 years, for their better wines, and, in consequence, Germany has tried to obtain E protection for the bottle as a geographical indication. The problem for Germany, however, is that the bottle shape had been used in Bolzano province, Italy, for more than a century, and that it had been used classically by Portuguese wine growers for their famed vinho verde. [1] F

[3] The appellant ('Bergkelder' - I do not intend drawing a distinction between the appellant and its predecessor in title) adopted the Bocksbeutel bottle in the early 1950s for marketing its Gr\)nberger line of wines. It is a successful line and the only locally produced wine that was being sold in a Bocksbeutel. Bergkelder sold about 2 million litres of Gr\)nberger wines, to the value of about R25 m, during 2002. When it G began marketing this wine, Portuguese wines were being sold on the local market in Bocksbeutels and they are still so being sold. Bergkelder, who imported standard bottles off the shelf, was audacious in applying for the registration of the container as a design in 1962 (absolute novelty was required) and the Registrar surprisingly H (if that is the appropriate adverb to use in the circumstances) granted the application. When the design registration was about to lapse, Bergkelder applied, on 16 February 1977, for a trade mark registration for the container. Importers of Portuguese wines opposed the application and, eventually, after more than eight years, the I matter was settled. Bergkelder undertook to limit the registration to alcoholic beverages 'produced in South Africa'. The

Harms JA

Registrar happily endorsed the settlement and registered a container mark in the form of A a Bocksbeutel in part A of the register in class 33 with the agreed limitation. [2]

[4] The respondents also use a Bocksbeutel bottle for their locally produced wines. There is, however, this difference: A large and prominent crayfish is embossed on the one flat side. The use B of this bottle, Bergkelder alleged, is an infringement of its registered trade mark. The respondents countered by denying that their container so nearly resembles the registered mark 'as to be likely to deceive or cause confusion', the test laid down by s 34(1)(a) of the Trade Marks Act 194 of 1993. In addition, C they have asked for an expungement of the mark on various grounds, the main one being that the container mark lacked, at the time of registration, and still lacks the necessary capability to distinguish Bergkelder's wines from those of other wine producers.

[5] The registration was granted under the repealed Trade Marks Act 62 of 1963. This Act, for the first time, made provision for the D registration of containers as trade marks. The definition of 'mark' in the Act as originally promulgated included a 'distinctive container' alongside the more conventional types of marks such as devices, names, words and the like. The Act was amended during 1971 when the adjective 'distinctive' was deleted from the definition. It E did not change much because, in order to have been registrable in Part A of the register, which was the case here, a trade mark had to contain or consist of 'a distinctive mark'.

[6] That containers could perform a trade mark function, ie, could be a badge of origin, was not, at the time, generally accepted or recognised. As late as 1986 the House of F Lords [3] regarded as startling the idea that a bottle - in that case the classic Coca-Cola bottle - could be a trade mark. One of the consequences of such recognition, the Lords felt, would be to create perpetual monopolies in containers, something unacceptable, even if 'the manufacturer has in the eyes of the public established a connection G between the shape of the container and the manufacturer'. [4]

[7] In due course, it was generally recognised that not only containers H

Harms JA

but also shapes of goods may perform a trade mark function. [5] For example, English law, A implementing a European Community Directive, now provides that a trade mark may consist of 'the shape of goods or their packaging' and our 1993 Act similarly states that shapes and containers for goods may be trade marks. Importantly, from a legal perspective these trade marks do B not differ from any other kind of trade mark:

'(T)he criteria for assessing the distinctive character of three-dimensional shape-of-products marks are no different from those applicable to other categories of trade mark.' [6] C

However, from a practical point of view, they stand on a different footing.

[8] The problem they pose for their promoters is that according to the public perception containers and shapes generally do not, in American parlance, serve as source identifiers. [7] Containers are usually perceived to be functional and...