Since the current Trade Marks Act, Act no 94 of 1993 ("the Act"), came into operation on 1 May 1995, it has been possible to register a trade mark in South Africa for the shape of a product. Such a trade mark registration was recently considered by the High Court of South Africa in the matter between Triomed (Pty) Limited v Beecham Group Plc & SmithKline Beecham Pharmaceuticals.

The Applicant in the matter, Triomed (Pty) Limited, brought an urgent application to expunge the Respondents’ trade mark registration for the shape of an antibiotic tablet. The Respondents opposed the application and brought a counter-application, inter alia, for trade mark infringement and passing-off.

The Main Application

The Applicant’s case was essentially that the Respondents endeavoured, through trade mark registration, to obtain a monopoly of the most appropriate shape for the tablet in question, a shape which other pharmaceutical manufacturers or distributors were using or may reasonably want to use in the course of the pharmaceutical trade. It was alleged that the shape was incapable of distinguishing the Respondents’ pharmaceutical products from similar products in the trade. The Applicant argued that the tablet simply consists of an oval shape tablet commonly found in the pharmaceutical industry, bearing no distinguishing features or characteristics by which the public would recognise the shape of the tablet as constituting a trade mark. The Applicant further contended that the tablet shape consisted of a shape or configuration where the registration of such a mark would limit the development of any art or industry and that if registration of the tablet shape was not expunged, others would not be able to use the oval shape tablet and would be prohibited from competing effectively.

The Respondents submitted that, based on a market survey, the shape trade mark was in fact capable of distinguishing their antibiotics from those of other similar products in the market.

The Court’s Decisions

The Court found that no evidence had been forthcoming identifying the specific feature(s) of the shape which were alleged to be distinctive and disagreed with the Respondents, who sought to equate recognition and familiarity with the tablet shape with the distinctiveness of the trade mark in question.

Marks that consist exclusively of a sign or any indication that may serve, in trade, to designate kind, quality, quantity, intended purpose or other characteristics of the goods in question, are generally precluded from registration. The Court held that there was a lack of compelling evidence that the interested public, including doctors, pharmacists and patients, regard the shape of the tablet in question as being a trade mark of the Respondents and not simply as the goods themselves. In addition, it was held that the mark consisted exclusively of a sign or indication that had become customary in the bona fide and established practices of the pharmaceutical trade and that the tablet shape had been used by many other pharmaceutical manufacturers in the course of trade.

In terms of Section 10(5) of the Act, a mark is not registrable if it consists exclusively of the shape configuration of goods where such a shape is necessary to obtain a specific technical result from the nature of the goods themselves. The Respondents showed that there were various other shapes that obtain the same technical result. However, the Court held that it does not matter that the technical result may not be a consideration for all dimensions of the shape and configuration, as long as the shape itself is necessary to achieve a technical result for certain dimensions of the tablet. All that had to be shown was that the essential features of the shape were attributable only to the technical result and that the shape was necessary to obtain the technical result.

Therefore, the Court held that the shape trade mark in question was of a shape and configuration that is essentially or primarily utilitarian and superior in design, and a prohibition on copying of the shape would inhibit competition. In effect, the Respondents would be seeking to create a monopoly through trade mark law of a primarily or essentially utilitarian shape. The Court found that the recognition of the shape of the tablet per se was not a recognition of the trade mark and concluded that the tablet shape was not the trade mark, but that the trade mark in question was something wider than the tablet shape.

Respondents’ counter-claims for infringement and passing-off

In order to establish infringement in this case, the onus rested on the Respondents to establish that their registered trade mark was well known in the Republic and that use of a similar mark was likely to take unfair advantage of or be detrimental to the distinctive character or repute of the registered mark.

The Respondents argued that the shape and configuration of the tablet sold by the Applicant was identical or at least confusingly similar to its registered trade mark. In addition, the Respondents argued that the word "AUGMAXCIL", which was used in relation to the Applicant’s product, was deceptively or confusingly similar to their registered mark "AUGMENTIN", since both of these marks commenced with the prefix "AUG" followed by the letter M. The Respondents contended that the Applicant had deliberately set out to use a mark that was very closely similar to the AUGMENTIN mark for the purposes of trading on the reputation and goodwill attached to this mark.

The Court’s Decisions

The Court confirmed that comparison between the two marks should be made through the eyes of the notional consumer. In this case the notional consumer would be the medical practitioner, who prescribes the pharmaceutical product, and the pharmacist who dispenses it, and not the patient. Accordingly, the Court dismissed the notion of confusion arising among the notional consumers.

The Court held further that the Respondents had failed to establish that the AUGMAXCIL word mark was a mark similar to AUGMENTIN. The shape depicted in the shape trade mark had also not come to be regarded as a second trade mark capable by itself of distinguishing the Respondents’ antibiotics.

The Court concluded that the AUGMAXCIL word mark and the shape adopted for the AUGMAXCIL tablet could not have the effect of diluting or blurring the distinctive nature of the word or shape trade mark of AUGMENTIN, and could therefore not be considered as having taken unfair advantage or been detrimental to its repute. It was found that the goodwill, reputation and distinctiveness that AUGMENTIN might have, would remain unaffected by the Applicant’s sale of a generic version under the trade mark AUGMAXCIL.

The Court granted the main claim for expungement of the shape trade mark in question and denied the Respondents’ counter claim for infringement of the shape or word trade mark and unlawful competition claims. The matter is currently on appeal to the Supreme Court of Appeal in Bloemfontein.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.