Bottle mark cancellation confirmed by Supreme Court

South Africa

In Die Bergkelder Beperk v Vredendal Koöp Wynmakery, the Supreme Court of Appeal has cancelled a container mark registration for a wine bottle.

Die Bergkelder Beperk (Bergkelder) has marketed its Grünberger wines in Bocksbeutels - bottles with a flattened globular shape - since the early 1950s. It is the only South African wine sold in such containers. However, Portuguese wines are also sold in South Africa in Bocksbeutels.

Bergkelder filed a trademark infringement action against Vredendal Koöp Wynmakery, a local wine producer, for its use of wine bottles allegedly similar to Bergkelder's container trademark registration for its wine bottle and Vredendal, in turn, sought to have the container mark expunged. The court of first instance upheld the claim for expungement and, consequently, found it unnecessary to decide the infringement issue. Bergkelder appealed to the Supreme Court of Appeal.

The Supreme Court dismissed the appeal and ordered the expungement of Bergkelder's container trademark.

The court stressed that, from a legal perspective, container trademarks do not differ from any other kind of trademark, in that, they must be capable of distinguishing. However, from a practical point of view, container marks stand on a different footing. It is this point which raises difficulties in respect of the registrability of container trademarks.

The answer to these practical difficulties appears to be found in the following statement in the judgment of the court:

"Since containers are not usually perceived to be source indicators, a container must, in order to be able to fulfil a trademark function, at least differ significantly from the norm or custom of the sector."

While it is not clear from the judgment what evidence, if any, was produced to establish the public perception of the containers, this would be a factual issue in trademark matters in respect of the registrability of container (or shape) marks in the future. Thus, a proprietor of a container or shape trademark intending to enforce its rights in the trademark should lead evidence in support of the fact that the public do perceive the container in question to be a source indicator. Furthermore, the proprietor of the container mark in question should also lead evidence relating to the norms or customs of the sector in question.

Once the norm has been established, the proprietor of the container mark must show that its mark differs sufficiently from the norm for the mark to be capable of distinguishing.

The statement in the judgment that, from a practical point of view, containers stand on a different footing does not change the legal test. The only difference is that comparing one container with another entails a three-dimensional, visual comparison, as opposed to a two-dimensional comparison in the case of word or device marks.

The legislature in making provision for a container to be a trademark was clearly of the view that the public would perceive a container as a badge of origin. In the circumstances, the starting point must be that the public do perceive a container to be a badge of origin but, from a practical point of view, whether or not the container in fact serves the function as a badge of origin depends on the features of the particular container in question as well as the norms or customs of the sector.

For background discussion of this case, see Bottle shape mark risks cancellation following competitors' alleged infringement and Grünberger wine loses its bottle in shape mark battle.

Duncan Maguire, Spoor & Fisher, Pretoria

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