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

Dart Industries Incorporated, together with its South African licensee Tupperware Southern Africa (Pty) Ltd (collectively, Tupperware), owned a registered South African shape trade mark for an ‘Eco bottle’ water bottle. Tupperware had marketed and sold this bottle in South Africa since 2011. In 2019, Botle Buhle Brands (Pty) Ltd began selling a water bottle of a very similar shape. Tupperware applied to the Gauteng Division of the High Court for relief based on trade mark infringement under ss 34(1)(a) and (c) of the Trade Marks Act 194 of 1993 and on passing-off. Botle Buhle Brands counter-applied for cancellation of the shape trade mark, alleging, inter alia, that it was not capable of distinguishing under s 10(2)(a) read with s 9. The High Court cancelled the trade mark and dismissed the passing-off claim. Tupperware appealed to the Supreme Court of Appeal.

The appeal against cancellation of the trade mark was dismissed, and the trade mark registration no. 2015/25572 was ordered to be cancelled. The appeal in respect of passing-off was upheld. Botle Buhle Brands was interdicted from passing off its water bottle as Tupperware’s Eco bottle or from using a confusingly similar bottle shape. Each party was ordered to pay its own costs.

This judgment is an important South African authority on the registrability of shape and container marks. It clarifies the stringent standards for inherent and acquired distinctiveness under s 9 of the Trade Marks Act and aligns South African law with comparative jurisprudence rejecting mere recognition-and-association as sufficient for acquired distinctiveness. The case also illustrates that passing-off protection may still be available even where a registered trade mark is invalid.