Dart Industries Incorporated and Another v Botle Buhle Brands (Pty) Ltd and Another

Dart Industries Incorporated (first appellant), the proprietor of the Tupperware brand, registered a shape mark (South African trade mark no. 2015/25572) for its "Eco bottle" water bottle with an hourglass shape and indentations in 2015. Since 2011, Tupperware Southern Africa (Pty) Ltd (second appellant) had been selling the Eco bottle in South Africa. In 2019, Botle Buhle Brands (Pty) Ltd (first respondent) began selling a virtually identical water bottle. The appellants brought an application for trade mark infringement under sections 34(1)(a) and 34(1)(c) of the Trade Marks Act 193 of 1994, and a claim based on passing-off. Botle Buhle Brands counter-applied for cancellation of the registered mark on several grounds, including that it lacked distinctiveness under section 10(2)(a) read with section 9(2), was registered without bona fide intention to use under section 27(1)(a), and was likely to limit development of industry under section 10(11). Both parties used a direct marketing sales model through home parties and online consultants. The high court granted the counter-application, finding the mark lacked both inherent and acquired distinctiveness, and dismissed the passing-off claim on the basis that the sales model eliminated likelihood of confusion.

• Whether a shape mark for a water bottle was inherently distinctive as required by section 9(2) of the Trade Marks Act 193 of 1994
• Whether the shape mark had acquired distinctiveness through prior use under section 9(2) of the Trade Marks Act
• What test should be applied to determine acquired distinctiveness: the 'recognition-association test', the 'reliance test', or the 'perception test'
• Whether the registered trade mark should be removed from the register under section 10(2)(a) for lacking distinctiveness
• Whether the appellants established the requirements for passing-off: reputation, likelihood of confusion, and damage
• Whether the direct marketing sales model eliminated the likelihood of confusion in a passing-off claim

The appeal against cancellation of the trade mark was dismissed. The appeal against dismissal of the passing-off claim was upheld. The high court order was set aside and replaced with: (1) dismissal of the trade mark infringement application; (2) granting the counter-application for cancellation of trade mark no. 2015/25572; (3) restraining and interdicting Botle Buhle Brands from passing off its water bottle as Tupperware's Eco bottle or as connected with it; (4) each party to pay its own costs.

A shape mark for a water bottle is not inherently distinctive under section 9(2) of the Trade Marks Act where the shape does not depart significantly from the norms and customs of the water bottle sector at the date of application for registration, and where there is no evidence that average consumers would perceive the shape as a badge of origin rather than merely another container design. To establish acquired distinctiveness through prior use under section 9(2), a trade mark applicant must prove that a significant proportion of the relevant class of consumers perceive the goods designated by the mark as originating from a particular undertaking because of the sign in question (the 'perception test'), not merely that consumers recognise and associate the mark with the applicant's goods. Where a shape mark has been used predominantly in conjunction with other prominent trade marks, it is difficult to establish that the shape alone has acquired distinctiveness as an indicator of origin. In passing-off proceedings where products are virtually identical, the likelihood of confusion must be assessed across all relevant marketing channels, including modern online platforms where products may be displayed side-by-side without explanatory context, not confined to traditional face-to-face sales environments.

The Court noted but did not decide the other grounds for cancellation raised by Botle Buhle Brands under sections 10(4), 10(11), and 27(1)(a) of the Trade Marks Act. The judgment extensively discussed competing tests for acquired distinctiveness (recognition-association test, reliance test, and perception test) and traced the development through English and European jurisprudence, particularly the Nestlé v Cadbury trilogy. The Court observed that while the recognition-association test was applied in the earlier South African case of Nestlé v International Foodstuffs [2014] ZASCA 187, the more stringent perception test from the European Court of Justice should be followed. The Court commented that the fact Tupperware embossed its logo on the Eco bottle suggested either: (a) recognition that consumers did not rely on the shape in a trade mark sense and relied on the Tupperware brand; or (b) that Tupperware did not trust the shape alone to identify trade source. On passing-off, the Court observed that Botle Buhle Brands appeared to have 'strained every nerve' to associate its bottle with the Eco bottle and 'sought to associate its product in every respect with that of Tupperware' to benefit from Tupperware's reputation.

This case provides important guidance on the registrability of shape marks in South African trade mark law. It clarifies that shape marks face considerable difficulties in establishing distinctiveness because consumers do not habitually perceive shapes as indicators of origin. The judgment adopts the European 'perception test' for acquired distinctiveness, requiring proof that consumers perceive goods designated by the mark as originating from a particular undertaking, rejecting the lower threshold 'recognition-association' test. This is a more stringent standard than previously applied in some South African cases. The case also demonstrates the importance of the trade mark owner's own use of the mark - where a shape is always used in conjunction with other prominent marks, it becomes difficult to prove that the shape alone has acquired distinctiveness. On passing-off, the case confirms that virtual identity of products creates a strong inference of likelihood of confusion, and that modern marketing methods (particularly online sales) must be considered in assessing confusion, not just traditional retail settings. The case shows that passing-off can succeed even where trade mark registration fails due to lack of distinctiveness.