Société des Produits Nestlé SA and Another v International Foodstuffs Co and Others

Nestlé, the proprietor of registered trade marks relating to the distinctive two-finger and four-finger wafer chocolate bar shapes used for its Kit Kat products, alleged that Iffco’s ‘Break’ chocolate bar unlawfully infringed these shape trade marks and amounted to passing off. Nestlé also challenged Iffco’s word marks, while Iffco counter-applied for the expungement of Nestlé’s shape trade marks and sought a review of the Registrar of Trade Marks’ decisions permitting amendments to Nestlé’s pending trade mark applications. The High Court dismissed Nestlé’s infringement claims and also dismissed Iffco’s counter-application and review. Both parties appealed to the Supreme Court of Appeal.

Nestlé’s appeal succeeded in part. Iffco was interdicted from infringing Nestlé’s registered two-finger and four-finger wafer shape trade marks and ordered to pay Nestlé’s costs. Iffco’s cross-appeal against the dismissal of its counter-application and review application was dismissed with costs. Costs were awarded on the basis of two counsel.

This decision is a leading South African authority on the registrability and enforcement of three-dimensional shape trade marks. It clarifies the scope of the Registrar’s powers to allow amendments to pending trade mark applications and provides important guidance on the interpretation of section 10(5) concerning functional shapes. The case affirms that product shapes may function as trade marks where distinctive, non-functional features are present and recognisable by consumers.