Reportable
Case No 100/01

In the matter between:

BEECHAM GROUP PLC

First Appellant
SMITHKLINE BEECHAM
PHARMACEUTICALS (PTY) LTD

Second Appellant

and

TRIOMED (PTY) LIMITED

Respondent

Coram:
HARMS, SCOTT, MPATI, CONRADIE JJA  and  JONES
AJA
Heard:
3 SEPTEMBER 2002
Delivered: 19 SEPTEMBER 2002
Subject:
Trade Marks; functional shapes; pharmaceutical tablet.

JUDGMENT

HARMS JA/

HARMS JA:
[1] This appeal represents yet another battle in the war concerning generic
pharmaceuticals. Recently we had occasion to uphold a copyright claim
relating to the package insert for a drug consisting of two substances,
amoxycillin (a semi-synthetic penicillin) and potassium clavulanate,
marketed by the appellants1 under the trademark Augmentin.2  On this
occasion Beecham wishes us to uphold a registered trade mark for the shape
of a tablet, used in relation to Augmentin tablets, and to find that the
respondent (‘Triomed’) infringes that trade mark.  Triomed imports a
pharmaceutical with the same composition and sells it under the name
Augmaxcil.  These tablets have the same shape and colour (white) as
Augmentin tablets but, whereas the name ‘Augmentin’ is embossed upon the
one side of the latter, the Augmaxcil tablets are blank.

1 It is unnecessary to distinguish between the appellants and I will conjoin them under the name ‘Beecham’.
2 Biotech Laboratories (Pty) Ltd v Beecham Group plc and Another 2002 (4) SA 249 (SCA).

[2] Triomed applied to the Transvaal Provincial Division for an order
rectifying the Trade Marks register by the expungement of the shape trade
mark (no 95/13154).  Beecham countered by applying for trade mark relief
not only in relation to this trade mark but also in respect of its word mark
‘Augmentin’.  Triomed’s application succeeded and the counter-application
was dismissed.3 The trial Judge, Smit J, subsequently granted leave to
Beecham to appeal against his orders, save the one dismissing the claim for
infringement of the word mark.
[3] Since its patent in relation to the composition has expired, Beecham
no doubt wishes to protect its market in some other way and this case
provides another illustration of the tension between competition principles
(the right to compete and the right to copy) and intellectual property rights,
and also between different types of intellectual property rights.  There is an
ever-increasing tendency to seek protection in a field not designed or

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

intended to cover the area.  This is not always particularly difficult since
intellectual property rights, because of international developments, business
realities and parliamentary involvement, may overlap or exist parallel to
each other.4  By way of illustration: Functional designs originally could be
protected as patents.  Later it was recognised that they may obtain copyright
protection if derived from drawings.  This, in its raw form, was
commercially unacceptable and s 15(3A) of the Copyright Act 98 of 1978
placed a lid on this protection.5  Some countries provide petty patent or
design copyright protection for them while the Designs Act 193 of 1993
introduced design protection for them on lines similar to that for aesthetic
designs.  They did not have protection against passing-off6 and could not be
registered as trade marks.  The latter prohibition (subject to limitations) has
fallen away as will be discussed in more detail.  (Whether the absolute

4 Philips Electronics BV v Remington Consumer Products [1998] RPC 283 310 (I will refer to this
judgment as Philips I).
5 Cf Dexion Europe Ltd v Universal Storage Systems (Pty) Ltd 6 September 2002 Case 500/2000 (SCA)
unreported.
6 Agriplas (Pty) Ltd v Andrag & Sons (Pty) Ltd 1981 (4) SA 873 (C).

passing-off rule still makes sense in the light of changes to the trade mark
position is a moot question; an adaptation along trade mark lines may be a
future development.)   The requirements for protection under each head
differ, as do the nature and duration of the protection.  This requires that
each right should be kept firmly within its legitimate bounds.
[4] The effective date of Beecham’s trade mark is 3 October 1995 and it
is registered for ‘antibiotics’ in class 5 (which includes pharmaceutical
preparations) of schedule 3 of the Trade Marks Regulations.  According to
the Registrar’s certificate, the mark ‘consists in the shape and curvature
configuration of a tablet substantially as shown in the representation’ on a
black and white photograph.  Due to the poor quality of the photograph I
prefer to use a drawing of an Augmentin tablet to illustrate the trade mark.
No regard should be had to the dimensions indicated.

The exact description of the shape of the tablet was the subject of much
evidence but it would not be unfair to state that the tablet is bi-convex with a
regular oval (i.e. elliptical and not egg-like) shape.  Beecham’s package
insert calls it ‘oval’ and the draughtsman of the drawing above refers to the
tablet as oval and the tablet shape as convex.  It is not without significance
to note that the mark is not limited by either colour or size.
[5] Any interested person may apply to court for the removal of an entry
wrongly made in or wrongly remaining on the Trade Mark register.7

7 Trade Marks Act 194 of 1993 s 24(1).

Triomed, as an interested party, sought relief under this provision with
reference to a number of grounds to be found in s 10 of the Act:
‘The following marks . . . if registered, shall . . . be liable to be removed from the register:

(1)
A mark which does not constitute a trade mark;

(2)
a mark which—

(a)
is not capable of distinguishing within the meaning of section 9; or

(b)
consists exclusively of a sign or an indication which may serve, in trade, to
designate the kind . . . or other characteristics of the goods or services . . .; or

(c)
consists exclusively of a sign or an indication which has become customary in
the current language or in the bona fide and established practices of the trade;
. . .

(5)
a mark which consists exclusively of the shape, configuration, colour or pattern
of goods where such shape, configuration, colour or pattern is necessary to obtain a specific
technical result, or results from the nature of the goods themselves;
. . .

(11)
a mark which consists of a container for goods or the shape, configuration, colour
or pattern of goods, where the registration of such mark is or has become likely to limit the
development of any art or industry;

. . .
Provided that a mark shall not be refused registration by virtue of the provisions of paragraph (2)
or, if registered, shall not be liable to be removed from the register by virtue of the said provisions
if at the date of the application for registration or at the date of an application for removal from
the register, as the case may be, it has in fact become capable of distinguishing within the
meaning of section 9 as a result of use made of the mark.’
[6] Smit J, in a comprehensive judgment, dealt with all the grounds raised
and upheld all Triomed’s contentions although they were separate and
distinct grounds of objection.  He gave the impression (at 544I-J) that he had
regard to their cumulative effect but it is clear from the judgment as a whole
that he dealt with each ground separately.  In any event, more often than not
the evidence on one ground was relevant in relation to another ground.  In
view of my conclusion that the appeal stands to be dismissed, I do not intend
to canvass the whole area as did the learned Judge but my failure to deal
with any particular issue should not be seen as either approval or disapproval
of his judgment.

[7] The learned Judge8 relied heavily upon the judgment of Aldous LJ in
Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC
809 (CA), herein called ‘Philips II’.  It was an appeal from Philips I.  Philips
II referred a number of questions to the European Court of Justice (the
‘ECJ’) which has since answered them in Koninklijke Philips Electronics NV
v Remington Consumer Products Ltd (‘Philips III’).9  Philips III differed
from Philips I and II in material respects and the basis of the judgment in the
Court below has consequently to be revisited.  These judgments all have
persuasive force because s 10 of the Act is based upon the First Council
Directive 89/1988 of the Council of the European Communities ‘To
approximate the laws of the Member States relating to trade marks’.10  The

8 At 532C-D, 533D-E and 538C-539B.
9 Delivered on 18 June 2002. The judgments of the ECJ can be found at http://www.curia.eu.int.
10 To be found at http://oami.eu.int/en/aspects/direc/direc.htm.  The important provisions of the directive
relevant to this case are quoted:
Art 2: ‘A trade mark may consist of any sign capable of being represented graphically, particularly words,
including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided
that such signs are capable of distinguishing the goods or services of one undertaking from those of other
undertakings.’
Art 3 (1): ‘The following shall not be registered or if registered shall be liable to be declared invalid:
a.
signs which cannot constitute a trade mark;
b. trade marks which are devoid of any distinctive character;

British Trade Marks Act (1994 Ch 26) had to conform to the Directive and
its interpretation by the ECJ binds the English courts.  This does not mean
that we are bound to follow these authorities nor does our diluted Dutch
legacy require of us to submit meekly to a Philips dynasty.  The Act remains
a South African statute, which must be interpreted and applied in the light of
our law and circumstances.  Local policy considerations may differ from
those applicable in Europe.  The application of rules remains, even in
Europe, a matter for local courts and they differ occasionally amongst
themselves.
[8] Does the shape mark constitute a trade mark under s 10(1)?  A sign
capable of being represented graphically and consisting of a shape or

c.
trade marks which consist exclusively of signs or indications which may serve, in trade, to
designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of
production of the goods or of rendering of the service, or other characteristics of the goods;
d. trade marks which consist exclusively of signs or indications which have become customary in the
current language or in the bona fide and established practices of the trade;
e.
signs which consist exclusively of:
§ the shape which results from the nature of the goods themselves, or
§ the shape of goods which is necessary to obtain a technical result, or
§ the shape which gives substantial value to the goods . . . .’

configuration falls within the definition of ‘mark’ in the Act (s 2 sv ‘mark’).
(The position under the repealed Trade Marks Act 62 of 1963 was different
because it did not permit the registration of shapes or configurations as trade
marks.)  A ‘trade mark’ (other than a certification trade mark or a collective
trade mark) –
‘means a mark used or proposed to be used by a person in relation to goods or services for the
purpose of distinguishing the goods or services in relation to which the mark is used or proposed
to be used from the same kind of goods or services connected in the course of trade with any
other person.’
The function of a trade mark, in terms of the definition, is to indicate the
origin of the goods or services.  The protection granted to a trade mark by s
34(1) and its secondary commercial functions, on the other hand, extend
beyond the ‘badge of origin’ concept.  This development, in common-law
countries, is in no small measure due to the seminal work of Frank I
Scheckter ‘The Rational Basis of Trade Mark Protection’ [1927] 40 Harvard

Law Review 813.11  The question under s 10(1) nevertheless remains a
‘badge of origin’ inquiry.12
[9] In essence, the test is whether Beecham used or proposed to use the
shape of the tablet ‘for the purpose of distinguishing’ it from tablets sold by
others or whether the function of the shape is to distinguish these tablets
from other tablets.
[10] In the Philips judgments the courts were concerned with a trade mark
relating to the shape of an electric shaver.  Philips, under the trade mark
‘Philishave’ had for many years sold a three headed rotary shaver in which
the heads were arranged in a triangular pattern which projected slightly
above a triangular base plate.  Later it obtained a trade mark for the shape of
the shaver head.  The shaver is very popular and the public recognises a

11 Tony Martino Trademark Dilution (Oxford University Press, 1996).
12 Cf Valentino Globe BV v Phillips and Another 1998 (3) SA 775 (SCA) 782I-J. Canon Kabushiki Kaisha
v Metro-Goldwyn-Mayer Inc [1999] RPC 117 (ECJ) par 28: ‘Moreover, according to the settled case-law of
the Court, the essential function of the trade mark is to guarantee the identity of the origin of the marked
product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish
the product or service from others which have another origin. For the trade mark to be able to fulfil its
essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a
guarantee that all the goods or services bearing it have originated under the control of a single undertaking
which is responsible for their quality (see, in particular, Case C-10/89 HAG GF (HAG II) [1990] ECR I-
3711, paragraphs 14 and 13).’

Philishave from the shape of its head.    The shape is functional and the
protection of such designs as trade marks was historically an anathema.  In
answer to a question put to it in Philips II, the ECJ held –
‘that there is no class of marks having a distinctive character by their nature or by the use made of
them which is not capable of distinguishing.’
(Philips III par 39).  This means that the question whether a mark constitutes
a trade mark as defined is a factual matter and should be approached without
any a priori disqualification or classification.  Functionality per se is no
disqualification.
[11] The Court below held that the pictorial representation of the mark is
vague and does not have the required degree of certainty for the public to
know the extent of the monopoly claimed (at 539D-F).  The vagueness is
aggravated by the use of the adverb ‘substantially’ in the registration.
Beecham’s answer is that since the field is crowded, the scope of its
monopoly should be interpreted restrictively to relate to identical tablets

only.  The limitation falls easily from counsel’s lips because Triomed’s
tablets are designed to be identical to Beecham’s, but the meaning of
‘substantially’ and ‘identical’ is not the same.  It is not clear whether an
objection based upon (to borrow patent law terminology) ‘insufficiency’ or
‘ambiguity’ can properly be brought under s 10(1).  In any event, there can
be no inherent objection to a trade mark registration relating to a
substantially oval and bi-convex tablet.  Whether such a mark is distinctive
is another matter because, conceptually, the question whether a mark is
capable of distinguishing within the meaning of s 9 is an issue different,
though not always separate, from the one now under consideration.  Since
vagueness affects the distinctiveness of a mark, Beecham may have to face
the music if the trade mark is ‘insufficient’ or ‘ambiguous’.
[12] Triomed argued that the mark is not a trade mark because Beecham
has not used it as such: Beecham at no time promoted, marketed or sold

Augmentin with reference to its shape; the package insert does not refer to
this trade mark but does refer to the Augmentin trade mark; no reference is
made to the shape of the tablet in any promotional material; and no reference
is made to the shape of the product in Beecham’s sales manual.
[13] Beecham’s counter is that this approach reduces the inquiry as to
whether a mark is a trade mark to a subjective inquiry whereas it, properly,
is an objective one.  One has to agree that the question cannot be purely
subjective because it would mean that if someone uses or wishes to use a
mark as a trade mark, the mark is ipso facto a trade mark.  Whether the
converse is true is a question that, due to the paucity of argument, can best
be left for another day.  Triomed’s argument that Beecham has failed to use
the shape of the tablet as a trade mark may arguably confuse or conflate the
requirements for a trade mark with the provision that a trade mark, which is
not used, may be removed from the register (s 27).

[14] Beecham relied upon market survey evidence in order to determine
the level of recognition of the Augmentin shape by pharmacists.  This
evidence is of particular importance to Beecham’s case as a whole and it
would be useful to consider it at this juncture.  Augmentin tablets with the
registered shape come in two dosage sizes: 375 and 625mg active
ingredients although, since they contain excipients, they weigh respectively
686,22 and 1120,33mg.13 These have been on the market since the mid
1970’s and Augmentin is one of the most commonly prescribed
pharmaceuticals. In conducting the market survey, a number of randomly
selected pharmacists were shown a 375 mg Augmentin tablet stuck to a
board, thereby covering the word mark.  The exercise was repeated with a
375 mg Augmaxcil tablet with another group of pharmacists.  Both groups
were asked the same question: ‘Can you please tell me the name of this

13 Beecham more recently introduced a 1000mg tablet, which, it alleges, has a shape different from the
registered trade mark. Save for a break line, it seems to me to be substantially oval and bi-convex.  If it is
different, one wonders why Beecham wishes to sell Augmentin in two shapes if the shape performs a trade
mark function.

antibiotic?’  It is not necessary to go into detail but it can be accepted that
the interviewees overwhelmingly identified both tablets as Augmentin.  This
response, according to Beecham’s argument, establishes that the relevant
sector of the public regards the shape as something used by Beecham (in the
words of the definition of ‘trade mark’) to distinguish its goods from those
of its competitors in the course of trade.
[15] The Court below was not prepared to have regard to the results of the
survey, principally on the ground that the wrong question had been asked (at
537B-C).  I agree.  The 375 mg Augmentin tablet is not the registered trade
mark.  (One wonders immediately why the exercise was not conducted with
the 625 mg tablet.  Are there too many tablets on the market of that size with
a similar shape?)  The interviewees should have been shown the mark as
registered. I am satisfied that in such event they would have replied with less
confidence.  Pharmacists do not buy or dispense drugs by way of shape.  To

show a pharmacist one of the most dispensed tablets would invariably have
led to its recognition by form.  But that does not answer the question posed
earlier, namely whether Beecham used or proposed to use the shape of the
tablet ‘for the purpose of distinguishing’ it from tablets sold by others or to
distinguish these tablets from other tablets.14  Another, albeit similar,
approach would be to ask whether any pharmacist would regard the shape
alone as a guarantee that the tablet was produced by Beecham.15  As Jacob J
pithily remarked in British Sugar PLC v James Robertson & Sons Ltd [1996]
RPC 281 (Ch D) 302:
‘There is an unspoken and illogical assumption that “use equals distinctiveness”.’
He also quoted Lord Russell, speaking about word marks (the principle
applies to every kind of mark) in The Canadian Shredded Wheat Co Ltd v
Kellogg Co of Canada Ltd [1938] 55 RPC 125 (PC) 145:

14 Cf in a passing-off context Roche Products Ltd and Another v Berk Pharmaceuticals Ltd [1973] RPC
473 (CA) 484 line 14-19.
15 Cf Canon par 28 quoted earlier.

‘A word or words to be really distinctive of a person’s goods must generally speaking be
incapable of application to the goods of anyone else.’
[16] Is the mark, in terms of s 10(2)(a) capable of distinguishing within the
meaning of s 9?  Section 9 provides as follows:
‘(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.
(2)  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.’
[17] In considering a similar attack under the equivalent British provision,
Philips II16 held that the fact that a trade mark, by use, has become such as to
denote goods of a particular provenance, does not necessarily mean that it is
capable of distinguishing those goods in the trade mark sense.  The more a
trade mark is descriptive of the goods, the less likely it will be capable of

16 At 817-818 cited by Smit J at 538C-539B.

distinguishing them in this sense.  Aldous LJ therefore concluded that if a
trade mark is primarily descriptive it requires ‘sufficient capricious
alteration’ to enable it to perform a trade mark function.
[18] The question whether the shape of an article could only be capable of
distinguishing if it contains some capricious addition, such as an
embellishment, which has no functional purpose was then submitted to the
ECJ, which held as follows (Philips III par 47-50):
‘47.  First, it is clear from Article 2 of the Directive [which provides that a trade mark ‘must be
capable of distinguishing the goods or services of one undertaking from those of other
undertakings] that a trade mark has distinctive character if it serves to distinguish, according to
their origin, the goods or services in respect of which registration has been applied for. It is
sufficient, as is clear from paragraph 30 of this judgment, for the trade mark to enable the public
concerned to distinguish the product or service from others which have another commercial
origin, and to conclude that all the goods or services bearing it have originated under the control
of the proprietor of the trade mark to whom responsibility for their quality can be attributed.

48.  Second, Article 2 of the Directive makes no distinction between different categories of trade
marks. The criteria for assessing the distinctive character of three-dimensional trade marks, such
as that at issue in the main proceedings, are thus no different from those to be applied to other
categories of trade mark.
49.  In particular, the Directive in no way requires that the shape of the article in respect of which
the sign is registered must include some capricious addition. Under Article 2 of the Directive, the
shape in question must simply be capable of distinguishing the product of the proprietor of the
trade mark from those of other undertakings and thus fulfil its essential purpose of guaranteeing
the origin of the product.
50. In the light of those considerations, the answer to the second question must be that, in order to
be capable of distinguishing an article for the purposes of Article 2 of the Directive, the shape of
the article in respect of which the sign is registered does not require any capricious addition, such
as an embellishment which has no functional purpose.’
[19] One has to agree that a capricious addition to a mark is not necessary
for it to be capable of distinguishing but that does not mean that such an
addition could not be an important element in deciding whether a particular
mark is capable of distinguishing within the meaning of s 9.  This must be so

especially if the mark consists of the shape of a functional article because
they are usually bought because of the functionality of their shape and not
because their provenance is proclaimed by their shape.
[20] The factual inquiry under s 9 read with the proviso to s 10 is done in
two stages.17  The first is whether the mark, at the date of application for
registration, was inherently capable of distinguishing the goods of Beecham
from those of another person.  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.
[21] Beecham, with reference to a textbook, stressed the following
statement, which was accepted by Triomed’s expert during cross-
examination –

17 British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281 (Ch D) 305-306.

‘With the competitive nature of the pharmaceutical industry, marketing considerations often focus
on unique tablet designs that have consumer appeal and can easily be distinguished from other
products of a similar nature or used for the same indication.’
As a general statement of fact it is no doubt correct but it begs a number of
questions.  Was the tablet in issue ‘unique’ (although that is somewhat
different from what the Act requires)?  Can it ‘easily’ be distinguished from
other products?  Does the design perform a ‘badge of origin’ function or
does it simply assist in distinguishing the tablet from other tablets?
[22] Another aspect impressed upon us by Beecham is the fact that the
registration is limited to ‘antibiotics’.  We, according to the submission, may
not have regard to other pharmaceuticals in assessing the distinctiveness of
the shape, not even to antibacterial tablets.  The submission is too narrowly
structured especially since trade mark registration potentially protects the
trade mark against use on similar goods (s 34(1)).  It is also somewhat
unrealistic considering the nature of the pharmaceutical trade.

[23] At the time of the launch of Augmentin another company, Eli Lilly,
already for a number of years had marketed an antibiotic tablet with the
shape of the registered trade mark.  It was, unsurprisingly, also white.  A
standard work, the Tableting Specification Manual, shows oval, bi-convex
tablets as something ordinary and refers to the shape as a ‘common’ tablet
shape.  The Encyclopaedia of Pharmaceutical Technology illustrates the
same tablet, stating that it is one of the ‘most common special shapes in the
pharmaceutical industry’.  (Common non-special in its terminology is a
round tablet).  Another standard work, the German Die Tablette, shows
graphically a tablet identical to Augmentin.  These facts – and they are not
the only ones – establish conclusively that the particular shape in issue was
not inherently capable of distinguishing in the trade mark sense.
[24] The shape did also not become distinctive through use.  Admittedly,
millions of these tablets are dispensed annually and the average pharmacist

will probably recognise an Augmentin tablet as such.  As discussed, the
shape of Augmentin does not distinguish Beecham’s tablets from tablets
sold by others18 but distinguishes them somewhat from other tablets, and no
pharmacist will regard the shape alone as a guarantee that the tablet comes
from Beecham.  In addition, Augmentin represents but one of an infinite
number of shapes of the mark as registered.  There are many pharmaceutical
tablets (including antibiotics) on the market with the identical or
substantially identical shape, albeit not necessarily with the same size as
Augmentin.  I realise that some of these were introduced after registration,
but others were not.  Both categories are admissible to decide whether, since
the application date, the mark through use has become capable of
distinguishing under the proviso to s 10.19

18 The facts in Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W) 437-438 provide
a good illustration of the same point in the context of passing-off at a stage when shapes were not eligible
for trade mark registration.
19 This distinguishes Luster Products Inc v Magic Style Sales CC 1997 (3) SA 13 (A) 22A-26D.

[25] This conclusion is consistent with the answer to the third question in
Philips III par 65:
‘[W]here a trader has been the only supplier of particular goods to the market, extensive use of a
sign which consists of the shape of those goods may be sufficient to give the sign a distinctive
character for the purposes of Article 3(3) of the Directive in circumstances where, as a result of
that use, a substantial proportion of the relevant class of persons associates that shape with that
trader and no other undertaking or believes that goods of that shape come from that trader.
However, it is for the national court to verify that the circumstances in which the requirement
under that provision is satisfied are shown to exist on the basis of specific and reliable data, that
the presumed expectations of an average consumer of the category of goods or services in
question, who is reasonably well-informed and reasonably observant and circumspect, are taken
into account and that the identification, by the relevant class of persons, of the product as
originating from a given undertaking is as a result of the use of the mark as a trade mark.’
(Emphasis added.)

[26] Finally on this point Beecham fell back on the aphorism ‘what is
worth copying is prima facie worth protecting’,20 submitting that Triomed’s
supplier’s conscious copying of the Augmentin tablet’s form indicates that
the form must have trade mark value.  Aphorisms can be dangerous and in
any event, it requires some genetic engineering in order to adapt an aphorism
applicable to a particular copyright problem to trade mark law.  It would
negate one of the foundations of the free market system.21
[27] Does the mark in terms of s 10(5) consist exclusively of the shape of
goods where such shape is necessary to obtain a specific technical result?
The mark no doubt consists exclusively of the shape of a tablet and the
remaining issue is whether the shape is necessary to obtain a specific
technical result.  This raised two questions in Philips II: First, does this mean
that such a sign falls foul of s 10(5) if the essential functional features of the

20 University of London Press Ltd v Universal Tutorial Press Ltd [1916] 2 Ch 601 at 610 quoted in Payen
Components SA Ltd v Bovic CC and Another 1995 (4) SA 441 (A) 452D-E.
21 Cf Taylor & Horne (Pty) Ltd v Dentall (Pty) Ltd 1991 (1) SA 412 (A) 422B-E; Cadbury (Pty) Ltd v
Beacon Sweets & Chocolates (Pty) Ltd and Another 2000 (2) SA 771 (SCA) 781B-C.

shape are attributable only to the technical result, and, second, does s 10(5)
apply if there are other shapes which can obtain the same technical result?
[28] Philips III gave the answer in these terms (par 84):
‘[The provision] must be interpreted to mean that a sign consisting exclusively of the shape of a
product is unregistrable by virtue thereof if it is established that the essential functional features
of that shape are attributable only to the technical result. Moreover, the ground for refusal or
invalidity of registration imposed by that provision cannot be overcome by establishing that there
are other shapes which allow the same technical result to be obtained.’
The ECJ reasoned that the various grounds for refusal of registration must be
interpreted in the light of the public interest underlying each of them (par 77)
and that the rationale underlying (amongst other) this ground (par 78) –
‘is to prevent trade mark protection from granting its proprietor a monopoly on technical
solutions or functional characteristics of a product which a user is likely to seek in the products of
competitors. Article 3(1)(e) [of the Directive, which includes the ground under consideration] is
thus intended to prevent the protection conferred by the trade mark right from being extended,
beyond signs which serve to distinguish a product or service from those offered by competitors,
so as to form an obstacle preventing competitors from freely offering for sale products

incorporating such technical solutions or functional characteristics in competition with the
proprietor of the trade mark.’
(Emphasis added.)  The intention underlying this particular ground is (par
79) –
‘to preclude the registration of shapes whose essential characteristics perform a technical
function, with the result that the exclusivity inherent in the trade mark right would limit the
possibility of competitors supplying a product incorporating such a function or at least limit their
freedom of choice in regard to the technical solution they wish to adopt in order to incorporate
such a function in their product.’
[29] The evidence establishes that the oval shape is important for the ease
and safety of swallowing especially larger tablets.  Patients do not readily
accept large round tablets.  A recent press release by Schering Laboratories
deals with a problem patients experienced swallowing round-shaped tablets.
Many of them required medical assistance to remove the tablet.  Schering in
consequence developed a new oval-shaped tablet ‘more similar in size,
shape and coating to a variety of other medications that have been used

safely around the world.’  The bi-concave shape facilitates the coating of the
tablet and the ‘band’ (the area between the two convexities) prevents the
tablet from crumbling.
[30] Beecham nevertheless argued that s 10(5) does not apply to the facts
under consideration because the function of the tablet is to act as an
antibiotic and that the shape of the tablet has nothing to do with curing
infections.  The argument is without any merit.  The provision is concerned
with the question of whether the registered shape is necessary to obtain a
specific technical result.  Shape, in this case, is necessary for ease of
swallowing, coating and the prevention of crumbling.  The fact that other
shapes may also attain these results is, as we have seen, beside the point.  It
follows that the choice of this shape provides a reasonable technical solution
to a problem and that the registration of the mark was consequently contrary

to the provisions of s 10(5) and also (11) because the registration of the
shape is likely to limit the development of the relevant art.
[31] The appeal is dismissed with costs, including the costs of two counsel.

____________________

L T C HARMS

JUDGE OF APPEAL

SCOTT JA
)Concur
MPATI JA
)
CONRADIE JA
)
JONES AJA
)