Protection of Container Marks in South Africa; Cointreau et Cie SA v Pagan International 1991 (4) SA 706A
The Appellant, Cointreau, is the proprietor of various Cointreau marks including, in particular, two container marks covering liqueurs. The distinctive orange liqueur which has since become well known throughout the world as Cointreau was developed in 1875 and a particular bottle and label was developed in 1885 and, with a few minor modifications, is still being used today. Cointreau was first introduced into South Africa in 1929 and has been sold extensively throughout South Africa since then.
The Respondent imported from Portugal and distributed in South Africa an orange based liqueur called Alianca Triplice. This liqueur has been manufactured by a corporation known as Caves Aliance since 1927 using a bottle, whose shape has remained substantially the same.
Towards the end of 1987 the Appellant instituted legal proceedings by Notice of Motion in the Transvaal Provincial Division for infringement of its two registered container marks and its label mark. The application was dismissed with costs and the Appeal was heard with leave of the Appellate Division. The Appeal only related to the claims of trade mark infringement based on the two container marks.
Before dealing with the issue of infringement the court dealt with the facts of the case and, in particular, the two registered container marks.In this regard it was conceded that the Appellant’s case with regard to trade mark no. 80/4468 was, if anything, stronger that that based on no. 80/5123 and the court accordingly confined its attention to the former trade mark. A certified extract from the Trade Mark Register for the trade mark was among the papers filed by the Appellant. The mark was endorsed with the following endorsements:
"The application is limited to the colour brown as shown on the representation of the mark affixed to the form of application."
The representation of the mark on the certificate is given below:
The court recognised that by its nature a container is a three dimensional object and consequently a single two dimensional drawing or photograph cannot portray it in all its aspects and, therefore, in some instances may not give an adequate representation of it for registration purposes. It is clearly of great importance, both to the proprietor of the trade mark and to the general public that the trade mark be adequately represented in the trade mark Register. The court considered Trade Mark Regulation 13 which prescribes how a mark, other than a word mark simpliciter, should be represented for the purpose of an application for registration and consequently for registration itself. It emphasises the need for the representation to be clear and distinct and provides that a copy of the trade mark may be sent and, in exceptional circumstances, the Registrar may call for the deposit of a specimen of any trade mark that cannot conveniently be shown by a representation and may refer thereto in the Register in such manner as he thinks fit. In short, the Regulation provides for considerable flexibility in the representation of marks.
The court concluded that in the case of a container mark because it is important that the registered mark be represented in a three dimensional manner and/or from different perspectives, advantage should be taken of the different options provided by the Regulation. These are wide enough to cover perspective drawings or photographs from different angles. In an exceptional case the Registrar may permit the deposit of a specimen container. The court noted that in the present case none of this was done.
One of the issues debated by Counsel was whether the registration relates merely to the one plan or aspect of the bottle portrayed in the Register or to the complete bottle in all its aspects. Appellant’s Counsel contended that since what was registered as the trade mark was a container it obviously had to be a three dimensional object; and that insofar as the representation of the mark as registered failed to portray the container in all its aspects the court could and should look at the Cointreau bottle itself in order to get the complete picture. This bottle was fully described in the papers and the court had been furnished with specimens of the bottle. There was no authority in support of this and Corbett CJ stated that the proposition appears to run counter to principle as it is the mark as registered, i.e. as represented in the Register, which delineates the proprietors monopoly and proclaims to the general public what the forbidden territory is. And it is the mark as registered which forms the basis of the comparison which must be made when it is alleged that someone else is using a mark which infringes the right of the registered proprietor. If the proprietor were entitled in infringement proceedings to add to or supplement the representation of the mark as registered, these principles would be wholly subverted and substantial inequity could arise. Corbett CJ was accordingly of the view that in this case the proper basis of comparison is Appellant’s mark as represented in the Register and that it is not permissible to have regard to the container actually used by the Appellant to mark its goods. He conceded that this may have unfortunate consequences for the Appellant but stated that that is how it had chosen to describe its monopoly and therefore it had only itself to blame.
The Chief Justice then considered Section 10 (2) of the Trade Marks Act which provides that no registration of a container as a trade mark:
"..... shall prevent the bona fide use by others of any utilitarian or functional feature embodied in such container."
A trade mark proprietor’s monopoly thus does not extend, vis a vis a bona fide user, to features embodied in the container which are of a utilitarian or functional nature. Thus distinction must be drawn between those features of the container in question which are utilitarian or functional and those which are not. Corbett CJ noted that as Section 10 (2), its interpretation and effect, have not hitherto been considered by our courts and considered both the English and Afrikaans dictionary meanings of the words utilitarian and functional and concluded that there is little difference in meaning between "utilitarian" and "functional"; and at least a large measure of overlapping. The court then considered American case law at length and stated that this provides helpful guidance on the interpretation and application of Section 10 (2) of the Act. The Chief Justice summarised the question as follows:
"Consequently the question generally is: Does the feature in question serve primarily or predominantly or essentially a functional or utilitarian purpose or not?"
The court next turned to the question of the alleged infringement. The Respondent’s product was described as follows:
"The bottle in which Alianca Triplice is marketed is brown in colour, generally square in plan, with rectangular sides and curved shoulders having the same or very similar shape and general proportions of those of the aspect of the bottle represented in the Appellants´ trade mark registration. The neck of the Aliance Triplice bottle is slightly squatter than that of the Appellants´ trade mark as represented and does not exhibit the ring referred to above. Nor does it have the seal or boss which appears on the trade mark as represented. (The labels were then described)"
The Appellant’s case was based on Section 44(1) (a) and alternatively Section 44 (1)(b). The Respondent denied that it had used the bottle as a trade mark but conceded that it used it in the course of trade otherwise than as a trade mark i.e. Section 44(1)(6) was applicable.
With regard to the comparison of the trade marks for purposes of infringement the court stated that in the case of a container mark the comparison gives raise the three questions:
a. Is there a resemblance between the Defendants´ mark and the registered mark such as to be likely to cause deception or confusion?
b. To what extent does this resemblance reside in utilitarian or functional features in the registered marks? and
c. Has the Defendants’ use of such features in his mark been bona fide?"
The Chief Justice then stated:
"When one comes to make a comparison between the Alianca bottle and the Appellants´ registered mark one is immediately confronted by the problem to which I have already alluded, viz that the representation of the registered mark does not give a three dimensional portrayal of the bottle in question. This leaves one in the dark as to what the shape (in plan) of the registered mark is and what the appearance of the other sides of the bottle is. Such uncertainty virtually precludes comparisons; at any rate, makes it impossible for one to say that the Alianca bottle does resemble the registered mark. On this basis Appellants case on infringement is still-borne."
Corbett CJ then stated that he would proceed on the assumption (in Appellants´ favour) that one is entitled to rely upon common sense and common experience in interpreting such a trade mark representation and that such reliance would lead one to the conclusion that the Appellants´ trade mark consists of a bottle, square in plan, its four sides all being as portrayed in the representation, save that the seal or boss appears on one side only. Using this assumption and bearing in mind that the trade mark registration contains no qualifications as to size, the court concluded that there is undoubtedly a resemblance between the Aliance bottle and the container constituting the registered mark. The question then was whether this resemblance was such as to be likely to cause deception or confusion.
The evidence had shown that although the liqueur trade is a competitive one the market for liqueurs is relatively limited. A liqueur is an expensive type of liquor. It is consumed less frequently than other liquor products and usually as an after dinner drink with coffee. It appeals to the more educated and sophisticated sections of the community and purchases of liqueurs are discerning buyers, very brand conscious and careful to seek out the brand they want. Cointreau has a general appeal in the community whereas Alianca Triplice appeals to, and is purchased primarily by, the Portuguese section of the community. Cointreau is substantially more expensive than Alianca Triplice. There was evidence to the effect that liqueurs are generally marketed in a bottle with a dark coloured glass, such as brown, green or black and that rectangular shaped bottles are commonly used in the spirit and liqueur trade. A squat rectangular bottle has certain practical advantages in the trade in that it is possible, because of its dimensions, to pack such a bottle into boxes of smaller dimensions than those which would be required for the packing of taller, round bottles. Corbett CJ felt that the only situation where there could be the slightest possibility of deception or confusion would be on the shelf of a liquor supermarket, but concluded that this possibility was slight and remote.
The court noted that:
a. the resemblance between the bottle lies only in the colour, general shape and proportions of the bottle and
b. the Cointreau bottle has the distinctive boss or seal which not only catches the eye but also bears embossed upon it the name Cointreau.
As to (a), the evidence had shown that in the liqueur trade brown is one of the limited range of colours normally used for containers; and that squat rectangular bottles are commonly used in the liqueur and spirits trade. As to (b), the prominence and distinctiveness of the eye catching boss, which is absent in the Alianca bottle, was found to be in itself a cogent factor in negativing the likelihood of deception or confusion. The court accordingly found that the Appellant had failed to establish that the Respondents’ use of the Alianca bottle was likely to give rise to deception or confusion and the infringement accordingly failed on this ground.
Corbett CJ added that, in any event, he was of the view that the features which are common, viz, colour, shape and general proportions, are primarily utilitarian or functional features used bona fide by the Respondent; and that, therefore, Appellant is prevented by the provisions of Section 10 (2) of the Act from claiming infringement of its registered marks.
The Appeal was dismissed with costs, including the costs of two Counsels.
The Applicant for registration of a container mark who does not adequately portray his container in the Register does so at his peril. Perspective drawings or photographs of the container from different angles would appear to be the most practical way of representing a three dimensional container in a two dimensional form.
Spoor & Fisher