Registrability of Container Marks Questioned

This article first appeared in the June 2006 edition of Trade Mark World.

Die Bergkelder Beperk – v – Vrendendal Koöp Wynmakery & others. South African Supreme Court of Appeal Case 105/05 dated 9 March 2006.

In the recent case of DieBergkelder Beperk – v – Vredendal Koop Wynmakery, the South African Supreme Court of Appeal dealt with the registrability of container trade marks in an application for the expungement of a container mark registration for a wine bottle. The container in question is known as a Bocksbeutel and has been in constant use by Franconian vintners for at least 500 years. Bergkelder has been marketing its GRUNBERGER line of wines in Bocksbeutels since the early 1950s and has had extensive sales. While it is the only South African producer of wine in such containers, Portuguese wines are also sold in South Africa in Bocksbeutels.

At first blush, the law is straightforward. The court dealt briefly with the history of container marks, confirming that South African law (as does English law implementing a European Community Directive), now provides that shapes (since 1995) and containers (since 1973) for goods may be trade marks, stressing that from a legal perspective container trade marks do not differ from any other kind of trade mark, i.e. they must be capable of distinguishing.

The complications arise from the following statement that appears in the judgment:

"However, from a practical point of view they (container marks) stand on a different footing."

In any matter a court must determine the issue before it by applying the particular facts in question to the law. One must accordingly carefully analyse the judgment in the Bergkelder case to determine which of the aforementioned "practical points of view" issues are issues or pure fact (and would differ from case to case) or are issues of law which would be of application in any future disputes relating to container marks.

The key appears to lie in the following statement in the judgment:

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

It is not clear what evidence, if any, was led in the court proceedings to establish the public perception of containers. While public perception would appear to be a factual issue, in the judgment it comes very close to being viewed as a legal principle applicable specifically to container marks. The lesson to be learned is this: any proprietor of a container (or shape) trade mark who wishes to enforce rights in the trade mark would be well advised to lead evidence in support of the fact that the public do perceive the container in question to be a source indicator. This evidence is also important to overcome another comment made in the judgment that there is a dependency between container marks (and shape marks) and other marks such as word marks. While it is true that a container mark would typically never be used without a word mark, the same applies to many device marks. Just because a container may be a secondary or tertiary trade mark applied to a product cannot disqualify it from being a trade mark.

What is meant by the requirement that the container must differ "significantly from the norm or custom of the sector"? Trade mark proprietors are familiar with the concept of establishing the relevant market sector and the norms or customs within that sector, both in dealing with distinctiveness and a likelihood of confusion or deception. In the Bergkelder case the court was influenced by the pre-existence of the Franconian and Portuguese Bocksbeutels and, on the facts, concluded that the bocksbeutel container cannot be a badge of origin in the ordinary trade mark sense.

In future legal proceedings relating to container marks, the proprietor of the container mark in question would be well advised to lead evidence relating to the norms or customs of the sector in question. Presumably the public perception of containers as source indicators would differ between goods such as alcoholic beverages, perfumes, hair shampoos, foodstuffs, and, applying the principles to recent shape cases, electric razors and pharmaceutical tablets.

Once the norm has been established, the proprietor of the container mark must show that his mark differs sufficiently (I believe significantly is too strong a word) from the norm for the mark to be capable of distinguishing. The degree of difference required for containers ought to be no different than that required for word marks. Is SWATCH a bad word mark for a watch because it differs only in the letter "S"?

The comment that from a practical point of view containers stand on a different footing must not be allowed to change the legal test; the only practical difference is that comparing one container with another entails a 3-dimensional visual comparison, as opposed to a literal comparison between word marks or a 2-dimensional comparison between device marks.

My concern is that the court goes even further in stating:

"But, as mentioned, the mere fact that it (the container) does so differ does not necessarily mean that it is capable of distinguishing because the question remains whether the public would perceive the container to be a badge of origin and not merely another vessel."

With respect this statement goes too far. If the legislature believed that the public would not perceive a container as a badge of origin it should never have made a specific provision in the Trade Marks Act for a container to be a trade mark. The starting premise must be that the public do perceive a container to be a badge of origin; 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.

Charles Webster

Spoor & Fisher

Date published: 2006/08/01
Author: Charles Webster

Tags: bergkelder supreme court south africa