Triomed (Pty) Ltd v Beecham Group plc and Others

• Jurisdiction: South Africa
• Citation: 2001 (2) SA 522 (T)

Triomed (Pty) Ltd v Beecham Group plc and Others
2001 (2) SA 522 (T)

2001 (2) SA p522

Citation	2001 (2) SA 522 (T)
Case No	5869/2000
Court	Transvaal Provincial Division
Judge	Smit J
Heard	April 11, 2000; August 14, 2000; August 15, 2000; August 16, 2000; August 17, 2000
Judgment	December 19, 2000
Counsel	L G Bowman SC (with G Morley) for the applicant.; C E Puckrin SC (with J N Cullabine) for the first and third respondents.

Flynote : Sleutelwoorde B

Trade mark — Expungement of — On grounds that trade mark unregistrable — Mark incapable of distinguishing — Trade Marks Act 194 of 1993, s 10(2)(a) read with s 9 — Trade mark to have characteristics rendering it factually capable of distinguishing — No C amount of use rendering distinctive trade mark which, factually, possessing no distinguishing characteristics — Trade mark unregistrable in terms of s 10(2)(a) if not inherently capable of distinguishing at date of application for registration by reason of use prior to that date — If at date of registration mark capable of D distinguishing through use but thereafter becoming incapable of distinguishing by time expungement application brought, mark offending against s 10(2)(a) and thus a mark wrongly remaining on register within meaning of s 24(1).

Trade mark — Expungement of — On grounds that trade mark unregistrable — Mark incapable of distinguishing — Trade Marks Act 194 of E 1993, s 10(2)(a) read with s 9 — Trade mark, registered in respect of antibiotics, consisting of 'shape and configuration . . . substantially as shown in the representation' of elliptical tablet with biconvex curvature and band or wall thickness around circumference — Trade mark registered in respect of all dimensions and all colours of tablet — Trade mark inherently incapable of F distinguishing when incapable of distinguishing without public's being first educated that shape is the trade mark — Mark unlikely to be inherently capable of distinguishing if other traders, in ordinary course of business and without improper motive, likely to wish to use same mark or mark nearly resembling it on or in connection with their own goods — Fallacy to equate recognition of article through use with G article's capacity to fulfil trade mark purpose of distinguishing that article from same article produced by another manufacturer — Evidence establishing that shape and configuration of trade mark in common use by other pharmaceutical manufacturers, including manufacturers of antibiotics — Such concurrent use inconsistent with notion of trade mark's being capable of distinguishing proprietor's pharmaceutical H products from those of other pharmaceutical manufacturers — Recognition of widely-sold pharmaceutical product not meaning that particular shape of particular product recognised as trade mark or that shape of product fulfilling purpose of trade mark.

Trade mark — Expungement of — On grounds that trade mark unregistrable — Mark not constituting trade mark — Trade Marks Act 194 of I 1993, s 10(1) read with definitions of 'trade mark' and 'mark' in s 2(1) — Trade mark, registered in respect of antibiotics, consisting of 'shape and configuration . . . substantially as shown in the representation' of elliptical tablet with biconvex curvature and band or wall thickness around circumference — Trade mark registered in respect of all dimensions and all colours of tablet — Trade mark consisting of shape to have distinctive J

2001 (2) SA p523

character and not such as to enable certain traders to acquire monopoly in A most appropriate shapes for goods concerned — Mark used to acquire such monopoly not being used for purpose of trade mark and, consequently, not constituting trade mark — Trade mark in question not in any way unique — Tablet containing no additions to shape having trade mark significance — Mark unable to function as, and not serving purpose of, trade mark. B

Trade mark — Expungement of — On grounds that trade mark unregistrable — Mark not constituting trade mark — Trade Marks Act 194 of 1993, s 10(1) read with definitions of 'trade mark' and 'mark' in s 2(1) — Trade mark, registered in respect of antibiotics, consisting of 'shape and configuration . . . substantially as shown in the C representation' of elliptical tablet with biconvex curvature and band or wall thickness around circumference — Trade mark registered in respect of all dimensions and all colours of tablet — Registration extending beyond actual tablet as represented to shape 'substantially as shown' in representation — Such description too vague to inform public with sufficient certainty of extent of monopoly claimed — Such D claim incapable of being graphically represented with sufficient certainty to constitute 'mark' as required by s 19(1).

Trade mark — Expungement of — On grounds that trade mark unregistrable — Mark consisting exclusively of sign or indication serving in trade to designate, inter alia, kind, intended purpose or other characteristics of goods or services — Trade Marks Act 194 of 1993, s 10(2)(b) — Section 10(2)(b) E seeking to preserve right of traders to use in trade 'non capricious' features of articles — Compelling evidence required to establish distinctiveness if trade mark prima facie offending against s 10(2)(b) — Trade mark, registered in respect of antibiotics, consisting of 'shape and configuration . . . substantially as shown in the representation' of elliptical tablet with biconvex curvature and band or wall thickness around F circumference — Trade mark registered in respect of all dimensions and all colours of tablet — Such trade mark consisting exclusively of indication of kind of goods for which mark registered and quality, characteristics and intended purpose of goods — Evidence establishing that shape and configuration of trade mark in common use by G pharmaceutical manufacturers — No compelling evidence tendered to show that interested public, including doctors, pharmacists and patients, regarding shape of tablet in all its dimensions as being trade mark of registered proprietor and not simply as goods themselves.

Trade mark — Expungement of — On grounds that trade mark H unregistrable — Mark consisting exclusively of sign or indication in bona fide and established practices of trade — Trade Marks Act 194 of 1993, s 10(2)(c) — Trade mark, registered in respect of antibiotics, consisting of 'shape and configuration . . . substantially as shown in the representation' of elliptical tablet with biconvex curvature and band or wall thickness around circumference — Trade mark registered in respect of all dimensions and I all colours of tablet — Evidence establishing bona fide customary use by pharmaceutical manufacturing trade of tablets in shape of registered trade mark — Such mark accordingly offending against s 10(2)(c).

Trade mark — Expungement of — On grounds that trade mark unregistrable — Trade Marks Act 194 of 1993, s 10(5) — Aim of s 10(5) to preserve J

2001 (2) SA p524

balance between manufacturer's or merchant's right to A identify its goods and to distinguish them from goods of other manufacturers and merchants, and recognition of general right to free competition, including right to copy — Whether shape, configuration, colour or pattern 'necessary to obtain a specific technical result' to be determined by enquiring whether, in substance, essential features B of shape, etc attributable to technical result — Trade mark, registered in respect of antibiotics, consisting of 'shape and configuration . . . substantially as shown in the representation' of elliptical tablet with biconvex curvature and band or wall thickness around circumference — Trade mark registered in respect of all dimensions and all colours of tablet — Evidence showing that shape, curvature and wall C thickness all dictated by function — Trade mark thus designed to achieve technical result and accordingly infringing s 10(5).

Trade mark — Expungement of — On grounds that trade mark unregistrable — Mark consisting of 'shape, configuration, colour or pattern of goods, where such registration of such mark . . . likely to limit the development of any . . . industry' — Trade Marks Act 194 D of 1993, s 10(11) — The more functional a shape the more likely it would be to limit development of industry — Trade mark, registered in respect of antibiotics, consisting of 'shape and configuration . . . substantially as shown in the representation' of elliptical tablet with biconvex curvature and band or wall thickness around circumference — Trade mark registered in respect of all dimensions and E all colours of tablet — Registered trade mark a primarily utilitarian shape and registered for all colours — Such mark cannot be denied to other pharmaceutical manufacturers without inhibiting competition and without preventing other manufacturers from using shape of tablet they would reasonably wish to use — Trade mark accordingly offending against s 10(11). F

Trade mark — Infringement — Trade Marks Act 194 of 1993, s 34(1)(c) - Purpose of s 34(1)(c) to prevent use of mark well known in Republic on goods other than those for which mark registered — Not intended to protect proprietor unable to prove requirements of s 34(1)(a) or s 34(1)(b) in respect of same or similar goods as those for which mark registered.

Trade Marks — Infringement — Trade Marks Act 194 of 1993, G s 34(1)(c) - Proof of infringement — Onus on proprietor to establish (1) use of registered trade mark or mark similar thereto; (2) use unauthorised; (3) use in course of trade; (4) registered mark well known in Republic; and (5) use likely to take advantage of, or be detrimental to, distinctive character or repute of H registered mark — 'Well known' meaning reputation, extending to substantial number of members of public or persons in trade concerned...