Beecham Group plc and Others v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA)

Beecham Group plc and Others v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA)

Facts

Beecham Group plc and Others (Beecham) were the owners of a registered trade mark for the shape of the antibiotic tablet Augmentin. Triomed (Pty) Ltd (Triomed) imported and sold a generic antibiotic tablet with the same shape as Augmentin. Beecham sued Triomed for trade mark infringement.

Issues

The main issue in the case was whether the shape of a tablet could be a valid trade mark.

Reasons

The Supreme Court of Appeal (SCA) held that the shape of a tablet could not be a valid trade mark. The court reasoned that the shape of a tablet was a functional feature of the tablet and that functional features cannot be trade marks.

Functional features

The SCA explained that a functional feature is a feature of a product that is necessary to the use of the product or that gives the product a technical advantage. The court found that the shape of the Augmentin tablet was a functional feature because it was necessary to the use of the tablet and because it gave the tablet a technical advantage in terms of manufacturing and packaging.

Trade marks

The SCA also explained that a trade mark is a sign that distinguishes the goods or services of one person from the goods or services of other persons. The court found that the shape of the Augmentin tablet could not distinguish Beecham's tablets from the tablets of other manufacturers because any manufacturer could produce tablets with the same shape.

Conclusion

The SCA dismissed Beecham's appeal and ordered Beecham to pay Triomed's costs.

Summary

The case of Beecham Group plc and Others v Triomed (Pty) Ltd (2003 (3) SA 639 (SCA)) is a landmark case in South African trade mark law. The case is particularly important for its analysis of the following issues:

• The concept of a functional feature;
• The concept of a trade mark; and
• The relationship between functional features and trade marks.

The SCA's decision that the shape of a tablet could not be a valid trade mark is significant. The decision means that businesses cannot obtain trade marks for functional features of their products. The decision also means that consumers cannot rely on the shape of a product to identify the source of the product.