Die Bergkelder Bpk v Vredendal Koöp Wynmakery and Others

• Jurisdiction: South Africa
• Citation: 2006 (4) SA 275 (SCA)

Die Bergkelder Bpk v Vredendal Koöp Wynmakery and Others
2006 (4) SA 275 (SCA)

2006 (4) SA p275

Citation	2006 (4) SA 275 (SCA)
Case No	105/05
Court	Supreme Court of Appeal
Judge	Harms JA, Streicher JA, Cameron JA, Lewis JA and Cachalia AJA
Heard	February 21, 2006
Judgment	March 9, 2006
Counsel	P Ginsburg SC (with R Michau) for the appellant.; A R Sholto-Douglas SC for the respondent.

Flynote : Sleutelwoorde B

Intellectual property — Trademark — Registrability of mark — Whether mark capable of distinguishing — Container marks — Container to be perceived by public as badge of origin (or source C indicator) — Container mark must at least differ significantly from the norm or custom of the sector in question — Wine producer holding registered trademark for wine bottle with particular shape — Whilst shape assisting in distinguishing appellant's wine from any other wine sold in bottle with that shape, shape alone not doing so — Shape not functioning as badge of origin — Mark liable to be expunged. D

Headnote : Kopnota

The appellant sought to interdict the respondent from continuing to infringe its trademark for a particular wine bottle known as a Bocksbeutel. The respondent in turn sought to have the mark expunged, primarily on the ground that, at the time of registration, the mark had lacked, and indeed still lacked, the E necessary capability of distinguishing the appellant's wines from those of other wine producers. The High Court ordered the mark to be expunged.

Held, that in order to qualify for protection, a container mark had to be capable of distinguishing, in the sense that the public would perceive the container as a badge of origin and not merely another container. (Paragraph [9] at 281F.) F

Held, further, that a Bocksbeutel was not a badge of origin which, without more, distinguished the wine of one producer from that of another. If the appellant's Bocksbeutel were placed alongside any other bocksbeutel, both stripped of their labels, one would not be able to distinguish one from the other. (Paragraph [15] at 282G - H.)

Held, further, that the fact that, at the time of registration and subsequently, no other local producer of wine had used a Bocksbeutel did not overcome the difficulty that the G bottle did not serve to distinguish. Whilst a Bocksbeutel assisted in distinguishing the appellant's wine, a Bocksbeutel per se did not perform the function of distinguishing the appellant's wine from any other wines sold in a Bocksbeutel. (Paragraphs [16] - [17] and [18] at 283C - E and 283H - 284B.)

Held, accordingly, that the appeal had to be dismissed. (Paragraph [19] at 284D.) H

The decision in the Cape Provincial Division in Die Bergkelder Bpk v Vredendal Koöp Wynmakery and Others confirmed.

Cases Considered

Annotations

Reported cases I

Southern African cases

Abbott Laboratories and Others v UAP Crop Care (Pty) Ltd and Others 1999 (3) SA 624 (C): referred to

Abdulhay M Mayet Group (Pty) Ltd v Renasa Insurance Co Ltd and Another 1999 (4) SA 1039 (T): referred to

Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W): referred to J

2006 (4) SA p276

Beecham Group plc and Another v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA): referred to A

Mars Inc v Cadbury (Swaziland) (Pty) Ltd and Another 2000 (4) SA 1010 (SCA): dictum in para [10] applied.

Foreign cases

Bograin SA's Trade Mark Application [2005] RPC 14: applied B

British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (Ch): referred to

Coca-Cola Trade Marks [1986] RPC 421 (HL): referred to

Compagnie Generale Michelin v National Automobile, etc Workers Union [1997] 2 FC 306: compared

Dualit Ltd's (Toaster Shapes) Trade Mark Applications [1999] RPC 890: referred to C

Eurocermex v OHIM (Shape of a Beer Bottle) [2004] ECR II - 0000: compared

Henkel KGaA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM); Procter & Gamble Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) cases C - 456/01 P and C - 457/01 P: referred to D

In re Pacer Technology 338 F 3d 1348 (67 USPQ 2d 1629) (Fed Cir 2003): referred to

Interlego AG's Trade Mark Applications [1998] RPC 69: referred to

John Haig & Co Ltd v Forth Blending Co Ltd (1953) 70 RPC 259: referred to E

National Fittings v Oystertec [2005] SGHC 225: referred to

Nestlé Waters France v OHIM case T - 305/02: followed

Philips Electronics NV v Remington Consumer Products [1998] RPC 283: referred to

Procter & Gamble Ltd's Trade Mark Applications [1999] RPC 673 (CA): referred to F

R v Johnstone [2003] UKHL 28: referred to

Seabrook Foods Inc v Bar-Well Foods Ltd 568 F 2d 1342 (CCPA 1977): referred to

S M Jaleel & Co Ltd's Trade Mark Application [2000] RPC 471: referred to

The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 (PC): referred to G

Tone Bros Inc v Sysco Corp 28 F 3d 1192 (Fed Cir 1994): referred to

Two Pesos Inc v Taco Cabana Inc 505 US 763 (1992): referred to

Viking-Umwelttechnik GmbH v Office for Harmonisation in the Internal Market (trade marks and designs) (OHIM) case T - 316/00: applied

Wal-Mart Stores Inc v Samara Bros Inc 529 US 205 (2000): referred to

Yakult's Application [2001] RPC 39: referred to. H

Case Information

Appeal from a decision in the Cape Provincial Division (Waglay AJ). The facts appear from the reasons for judgment.

P Ginsburg SC (with R Michau) for the appellant.

A R Sholto-Douglas SC for the respondent. I

In addition to the authorities cited in the judgment of the Court, counsel for the parties referred to the following:

Adidas Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd 1976 (1) SA 530 (T) at 535H

Bata Ltd v Face Fashions CC and Another 2001 (1) SA 844 (SCA) at para [9] J

2006 (4) SA p277

Berman Brothers (Pty) Ltd v Sodastream Ltd and Another 1986 (3) SA 209 (A) at 237F A

Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another 2000 (2) SA 771 (SCA)

Cointreau et Cie SA v Pagan International 1991 (4) SA 706 (A) at 711H - I, 712C, 714D - I, 715G - H, 717D - E B

Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) at 947H - 948D

Die Bergkelder v Delheim Wines (Pty) Ltd 1980 (3) SA 1171 (C)

First National Bank of Southern Africa Ltd v Barclays Bank plc and Another 2003 (4) SA 337 (SCA) at para [10]

General Electric Co v The General Electric Co Ltd [1972] 2 All ER 507 (HL) C

Heublin Inc and Another v Golden Fried Chicken (Pty) Ltd 1984 (3) SA 911 (T) at 913G

John Craig (Pty) Ltd v Dupa Clothing Industries (Pty) Ltd 1977 (3) SA 144 (T) at 150H D

Kellogg Co and Another v Bokomo Co-operative Ltd 1997 (2) SA 725 (C) at 733I - J

Luster Products Inc v Magic Style Sales CC 1997 (3) SA 13 (SCA) at 21D - E, 23A - B, 24I - 26E, 27B - C

Metal Box South Africa Ltd v Midpak Blow-Moulders (Pty) Ltd 1988 (2) SA 446 (T) at 451D - F E

New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1990) 171 CLR 363 at 385

Oude Meester Groep Bpk and Another v SA Breweries Ltd; SA Breweries Ltd and Another v Distillers Corporation (SA) Ltd and Another 1973 (4) SA 145 (W) at 161A - G F

Spier Estate v Die Bergkelder Bpk and Another 1988 (1) SA 94 (C)

Sportshoe (Pty) Ltd v Pep Stores (SA) (Pty) Ltd 1990 (1) SA 722 (A) at 727D - F

Standard Bank of South Africa Ltd v United Bank Ltd and Another 1991 (4) SA 780 (T) at 788D - G, 798F - I G

Stellenbosch Farmers' Winery Ltd v Stellenvale Winery (Pty) Ltd 1957 (4) SA 234 (C) at 240

Victoria's Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A)

Cornish Intellectual Property: Patents, Copyright Trade Marks and Allied Rights 2 ed at 466 - 7 H

Kitchin et al Kerly's Law of Trade Marks and Trade Names 14 ed at 598 - 9

Webster and Page The South African Law of Trade Marks 4 ed at para 12.36, 12.7, 12.8.4.

Cur adv vult. I

Postea (March 9).

Judgment

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

2006 (4) SA p278

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...