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BRIEF FACTS
This appeal concerned a trade mark dispute relating to a wine bottle. The appellant sought to interdict the respondent from infringing its registered trade mark for a container for alcoholic beverages (TM 1977/00647) and the respondent, in turn, sought to have the mark expunged. Wagley AJ, in the
Cape High Court, ordered the mark to be expunged and, consequently, found it unnecessary to decide the infringement issue. The appeal was with his leave.

The appellant adopted the Bocksbeutel bottle in the early 1950s for marketing its Grünberger line of wines. It is a successful line and the only locally produced wine that was being sold in a Bocksbeutel. Bergkelder sold about 2m litres of Grünberger wines to the value of about R25m during 2002. When it began marketing this wine, Portuguese wines were being sold on the local market in Bocksbeutels and they are still so being sold.

Bergkelder, who imported standard bottles off the shelf, was audacious in applying for the registration of
the container as a design in 1962 (absolute novelty was required) and the registrar surprisingly the granted the application. When the design registration was about to lapse, Bergkelder applied on 16 February 1977 for a trade mark registration for the container. Importers of Portuguese wines opposed the application and eventually after more than eight years the matter was settled.
Bergkelder undertook to limit the registration to alcoholic beverages ‘produced in South Africa’. The same was endorsed by the registrar under class 33. The Respondent on the other hand used Bocksbeutel bottle for their locally produced wines. There is, however, this difference: a large and prominent crayfish is embossed on the one flat side.
The use of this bottle, Bergkelder alleged, is an infringement of its registered trade mark which the Respondents denied.

4.    ISSUE
1.    Whether the High court in Cape had erred in law by ordering that the mark be expunged and consequently finding it unnecessary to decide on the infringement issue?

RESOLUTION OF ISSUE
The Respondents countered by denying that their container so nearly resembles the registered mark ‘as to be likely to deceive or cause confusion’, the test laid down by s 34(1) (a) of the Trade Marks Act 194 of
1993. In addition, the Respondents asked for an expungement of the mark on various grounds, the main being that the container mark lacked at the time of registration and still lacks the necessary capability to distinguish Bergkelder’s wines from those of other wine producers.
That then brought about the factual question whether, during 1977, a Bocksbeutel could have performed a ‘badge of origin’ function enabling it, without more, to distinguish the wine of one producer from that of another. In the light of the common cause facts, the answer was clearly in the negative. It was stated that  the use of the Grünberger bottle as a trade mark would, in the circumstances, be palpably misleading and that the use of the Bocksbeutel as some or other kind of geographical indication by Franconians, Portuguese and some Italians is proof of the fact that a Bocksbeutel has the inherent capability to act as a badge of origin.

As to whether it would be possible to register as a container mark the well-known Dimple bottle (used for marketing Scottish whisky) in respect of ‘spirits produced in South Africa’ without causing confusion? The Court was of the view that counsel’s submission that there was apparently some regulation somewhere that required wines and spirits to contain an indication of the country of origin and that the ordinary purchaser would look for that indication and would then know that the product has a different source was not acceptable.

CONCLUSION
Laddie J pointed out that merely because a bottle shape is both new and visually distinctive, meaning that it would be recognized as different to other bottles on the market, does not mean that it would convey to someone who was not a trade mark specialist that it was intended to be an indication of origin or that it
performed that function.


The appeal was dismissed.

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