Message in a bottle – a trademark dispute over container shape

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Juli Hopf | Partner | Spoor & Fisher | mail me |


 

 

 

 

 

 

 

 

 


Pieter Delport | Associate| Spoor & Fisher | mail me |


Trademark practitioners always get excited when the shape of a product finds itself at the centre of a trademark dispute. Although the shape of goods generally finds itself at the very bottom of the spectrum when it comes to distinctiveness and public perception, most trademark legislation worldwide allows for shapes to be registrable as trademarks.

The South African Trademarks Act specifically includes both “shapes and containers” in the definition of what may constitute a ‘mark’.

A trademark dispute about a shape of a bottle

With this in mind, we review the trademark dispute between Dart Industries Incorporated and Another v Botle Buhle Brands (Pty) Ltd and Another (636/2021) [2022] ZASCA 170 (1 December 2022). As Judge Makgoka, who delivered this judgment, described it – “This is a trademark dispute about a shape of a water bottle.”

Dart Industries Incorporated (the first Appellant) is the registered proprietor of South African trademark registration no. 2015/25572 in class 21.

The trademark was filed on 9 September 2015 and is registered for ‘Household containers; kitchen containers; water bottles sold empty; insulated bags and containers for beverages for domestic use; beverageware; drinking vessels.’ It is endorsed as consisting of ‘a container for goods’, and is represented as follows on the trade marks register.



The second appellant is Tupperware Southern Africa (Pty) Ltd. Both appellants are part of the Tupperware group of companies with the second appellant being the South African representative and licensee in South Africa. The local entity also manufactures and sells Tupperware goods in South Africa. For convenience, the two appellants are referred to herein as ‘Tupperware’.

‘Tupperware’ has been selling a plastic bottle, in the shape for which it has been registered as a trade mark since 2011. The bottle has been marketed since as the ‘Eco Bottle’.

In 2019, Botle Buhle Brands (Pty) Ltd, a South African company, started to market and sell the following bottle:



Tupperware approached the high court on two grounds – firstly to restrain Buhle Brands from infringing its registered trademark in terms of sections 34(1)(a) and 34(1)(c) of the South African Trademarks Act (the Act). Tupperware also sought a restraining order based on passing off.

In response, Buhle Brands launched a counter-application for the removal of Tupperware’s trade mark registration. Buhle Brands based its application on sections 10(2)(a), 10(4), 10(11) and 27(1)a) of the Act. The high court decided the matter on the basis of section 10(2)(a) – ‘Unregistrable trademarks’ and found that Tupperware’s registered trade mark was neither inherently distinctive nor had acquired distinctiveness as a result of prior use, as envisaged in section 9(2).

Tupperware’s application was dismissed in the high court and Buhle Brands’ counter application was granted. This made it unnecessary for the high court to decide the infringement issue or Buhle Brands’ other grounds. On deciding the passing of issue, the court found that, although the bottles were virtually identical, taking into consideration the sales model used by both parties, there was no likelihood of deception or confusion.

Turning to the supreme court of appeal, the court considered first, whether the shape of Tupperware’s Eco Bottle as a mark, is liable to be removed from the register in terms of section 10(2)(a) as being incapable of distinguishing within the meaning of section 9(2). This subsection provides for either inherent distinctiveness or acquired distinctiveness (distinctiveness by reason of prior use).

Inherent distinctiveness

The court reminded us of the two-stage enquiry as explained in Beecham Group plc and Another v Triomed (Pty) Limited and, in considering the question as to whether Tupperware’s mark is inherently distinctive, reminded us to bear in mind that the function of a trade mark is to indicate the origin of the goods or services.

In the case of shape marks, the perception of the public is crucial. If the public relies on the distinctiveness of the shape as an indicator of the source of the goods, that then denotes the shape as a trade mark. The court went further in remarking that ‘since containers are not usually perceived to be source indicators, a container mark must, in order to be able to fulfil a trade mark function, at least differ ‘significantly from the norm or custom of the sector’. The question therefore had to be asked whether the public would perceive the container to be a badge of origin and not merely another vessel.

Tupperware contended that its Eco Bottle ‘departs significantly’ from the shape of other water bottles in the market. They also claimed that the use of the specific hourglass shape with indentations was unique and unknown to the market at the time the bottle was launched in South Africa.

The court then applied an established three step approach in deciding whether the mark differs significantly from the norms and customs of the sector: Firstly one needed to determine what the sector is. Secondly, one needed to identify any common norms and customs of that sector and lastly is one needed to decide whether the mark departed significantly from those norms or customs. There was no evidence before the court that consumers appreciated that the bottle conveyed a trade mark significance.

Applying principles set down in Bergkelder Bpk v Vredendal Koöp Wynmakery,  the court was not convinced that customers would consider the shape of the Eco Bottle alone as a guarantee that it was produced by Tupperware, as ‘containers and shapes generally do not serve as sources of origin.’ The appeal court agreed with the high court that the Eco Bottle did not have an inherently distinctive character.

Distinctiveness as a result of prior use

As mentioned, there was no evidence before the court that the purchasers of the Eco Bottle perceived the shape of the bottle as an indicator that it originated from Tupperware.

Tupperware also never marketed, promoted or sold the bottle with reference to its shape. Instead, reference is rather made to the word Eco Bottle as a trade mark or as part of the Tupperware range of goods. The Eco Bottle was also embossed with the Tupperware trade mark on its side and the court was of the mind that the public might rather perceive the bottle as originating from Tupperware because of the well-known embossed trade mark and not because of the shape of the bottle.

In closing and to summarise, the court, in using the language used in Beecham, found that the shape of the Eco Bottle ‘did not distinguish it from [water bottles] sold by others but, distinguishes them somewhat from other [water bottles].’ Tupperware’s Eco Bottle was therefore not distinctive, and the high court was correct to uphold Buhle Brands’ counterclaim by ordering the cancellation of Tupperware’s registered mark.

Passing off

Turning to the claim based on passing off, the court had to determine whether Buhle Brands was passing off its water bottle as being Tupperware’s Eco Bottle. Passing off consists ‘in a representation by one person that his business (or merchandise, as the case may be) is that of another, or that it is associated with that of another’. (See Capital Estate and General Agencies (Pty) Limited v Holiday Inns Inc. 1977 2 SA 916 (A) 929C).

In passing off proceedings, the court had to consider all extraneous factors (the entire get-up of the respective products) in reaching a conclusion whether there was a likelihood of confusion. This is exactly what this court did. The court considered the shape, colour and material of the bottles.

The court also considered the caps of the bottles as well as the placement of the respective ‘Tupperware’ and ‘Botle Buhle’ trademarks embossed on the side of the bottles.

Below are representations of the respective water bottles:


Tupperware Eco Bottles


Botle Buhle bottles


The requirements for a successful passing off action were summarized by the court as follows: “Firstly, that there is proof of reputation or goodwill, secondly that there is a reasonable likelihood that members of the public may be confused into believing that the business of one is, or is connected with, that of another. The third is damage.”

The Tupperware Eco Bottle had been promoted extensively in catalogues, newsletters, and promotional leaflets. Considering the extensive and undisputed sales figures and marketing information, both the high court and the court of appeal found that Tupperware had established the necessary reputation in the Eco Bottle.

Both courts are also in agreement that the bottles of both parties were ‘virtually identical’ with the only significant difference between the two competing bottles being the embossing of the words ‘Tupperware’ and ‘Botle Buhle’ on the side and cap of the bottles. The embossing, as the court phrased it, was considered to be ‘inconspicuous, and does little or nothing to distinguish the two products.

The high court concluded that given the sales model, there was no likelihood of confusion. The high court confined its enquiry however, to “so called” Tupperware parties – Tupperware’s unique sales model which included the hosting of parties by a magnitude of consultants, predominantly at their homes.

Judge Makgoka remarked, quite firmly as follows: ‘It seems to me that the overall design of the Buhle Brands’ water bottle was not to distinguish it from that of Tupperware, but rather to associate the two. In other words, Buhle seems to have strained every nerve to associate its water bottle with the Eco Bottle.’

The judge remarked that the enquiry whether a likelihood of confusion existed, should extend beyond the Tupperware parties. Consumers may encounter the competing bottles at a party where both products are sold. Both the competing products were also marketed online, and in some instances catalogues of both products were depicted side by side. This, in the view of the court establishes the likelihood of confusion between the two products. It is therefore very likely that a customer would encounter the two competing bottles side by side and make an association between them – this was even more likely when making online purchases.

The supreme court of appeal also remarked that ‘This type of confusion, which results in consumers purchasing one product thinking that it is the one they know, or is associated with it, is at the heart of the action of passing-off.’ The court found that the likelihood of confusion therefore did exist.

Finally, regarding damages, the court remarked that, ‘by adopting the same marketing strategy as Tupperware, Buhle Brands had sought to associate its product in every respect, with that of Tupperware. This would enable Buhle Brands to trade its water bottle upon and benefit from the reputation of Tupperware’s Eco Bottle. The damage to Tupperware is inevitable.’

In conclusion

This case is another great example of how shapes and containers (or even a combination of the two) clearly can serve a distinguishing function.

It remains however, important for the owners of these shapes and shape trademarks to consider carefully the way in which they wish to protect their products and how they wish to distinguish their goods from those of competitors. It remains clear that by relying only on shape as a trademark is only half the battle won.


 



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