Bottle shape mark risks cancellation following competitors' alleged infringement

South African wine producer Die Bergkelder Beperk has filed trademark infringement actions against Vredendal Koöp Wynmakery, a local wine producer, and Shoprite Checkers Limited, a retailer, for their use of wine bottles whose shape is allegedly similar to Bergkelder's registered flagon shape mark.

In 1977 Bergkelder registered a flagon shape as a trademark in connection with wines produced in South Africa. At the time of registration, the container had already been used on an extensive scale and acquired a substantial repute. Although Bergkelder's Grünberger wine was the only South African wine sold in bottles of that shape, various foreign wines are sold in similar containers in South Africa.

Vredendal Koöp and Shoprite Checkers subsequently proceeded to sell locally-produced wines in bottles that are very similar to Bergkelder's registered flagon shape. Bergkelder launched court actions on the basis of its registered trademark rights. Both Vredendal Koöp and Shoprite Checkers counterclaimed that Bergkelder's shape mark is non-distinctive and liable to cancellation on the grounds that it was wrongly registered (in particular as other wine producers were already using similar bottle shapes).

In order to support its infringement claim, Bergkelder will have to show that the shape and configuration of the Vredendal Koöp and Shoprite Checkers bottles are confusingly similar to the shape of its Grünberger bottle. In particular, Bergkelder will have to demonstrate that the Vredendal Koöp and Shoprite Checkers bottles do not merely copy the functional elements of the Grünberger bottle, but rather copy its distinctive features, such as the bulbous body and thin neck.

As to the application for the cancellation of its trademark registration, Bergkelder will rely on Section 42 of the Trademarks Act 62 of 1963 that permanently protects a trademark registration against cancellation provided that it:

• has been registered for seven years;
  
  
• was not obtained by fraud; and
  
  
• does not consist of a word that has become generic or is likely to deceive or cause confusion.

Bergkelder's argument will be that its mark meets all these requirements and is therefore permanently protected against cancellation.

This matter is likely to go to a hearing towards the end of this year.

Megan Reimers, Spoor & Fisher, Pretoria