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Case No 373/89

IN THE SUPREME COURT OF SOUTH AFRICA (APPELLATE DIVISION)

In the matter between:

COINTREAU et CIE S.A Appellant
and
PAGAN INTERNATIONAL . Respondent

CORAM CORBETT CJ, NESTADT, GOLDSTONE JJA, NICHOLAS et VAN DEN HEEVER AJJA.

DATE OF HEARING: 15 August 1991

DATE OF JUDGMENT: 29 August 1991

JUDGMENT

CORBETT CJ:

1

CORBETT CJ:
The appellant in this matter, Cointreau et Cie SA, a French corporation with its registered office at Saint Barthelemy-d'Anjou in France, carries on business there as a manufacturer of liqueurs and other alcoholic beverages. The present chairman of appellant, Pierre Cointreau, is a descendant of Edouard Cointreau, whó in 1875 developed a distinctive orange liqueur which has since become well-known throughout the world as "Cointreau". In about 1885 Edouard Cointreau chose a particular bottle and a label for the marketing of this liqueur and with a few minor modifications these have the same appearance as the bottle and label presently used by the appellant (as Edouard Cointreau's successor-in-title) in the sale and distribution of Cointreau. Appellant appears to be controlled by the Cointreau family.

. Cointreau was first introduced in South Africa in
2 1929 and up to the time when proceedings in this matter were commenced had been sold extensively through a general distributor and various retail liquor outlets in the Republic. In 1980 appellant obtained the registration in South Africa, in terms of the Trade Marks Act 62 of 1963 ("the Act"), of two trade marks (nos 80/4468 and 80/5123). Each of these marks is registered in class 33 in respect of "spirits and liqueurs" and consists of a container for goods. In 1981 appellant obtained a further registered trade mark (no 81/0153) in class 33, for wines, spirits and liqueurs, in respect of a label. These trade marks have reference to the bottle and the.label used by appellant in the marketing of the Cointreau liqueur.

Respondent is G Pagan Enterprises (Pty) Limited, a South African company which trades under the style of "Pagan International" and has its place of business in Sandton, Transvaal. Respondent was incorporated in 1967 and
3 conducts the business of, inter alia, importing wines, spirits and liqueurs into the Republic of South Africa. It specializes in the importation of wines, spirits and liqueurs originating from Portugal. In 1967 respondent commenced importing from Portugal and distributing, as the sole distributor, in South Africa, an orange-based liqueur called "Alianca Triplice". This liqueur is produced and bottled in Portugal by a corporation known as Caves Alianca - Vinicola de Sangalhos SA ("Caves Alianca"). As regards the name of the liqueur, "Alianca" is clearly derived from the name of the producer; and the word "Triplice" signifies "triple dry". Caves Alianca has been producing and marketing its Alianca Triplice since 1927 in a bottle, whose shape has remained the same for the ensuing 60 years (i e up until the commencement of these proceedings), and using a bottle label, which too has always been substantially the same.

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Towards the end of December 1987 and in the Transvaal Provincial Division appellant instituted legal proceedings by notice of motion, alleging that respondent's use of the bottle in which Alianca Triplice is marketed constituted an unlawful infringement of appellant's registered trade marks nos. 80/4468 and 80/5123 (the container marks) and that its use of the label on the bottle constituted an unlawful infringement of its registered trade mark no 81/0153 (the label mark); and claiming an interdict restraining such user by respondent, together with certain ancillary relief. The application, which was opposed by respondent, was heard by MacArthur J. He dismissed the application with costs, including the costs of two counsel. With the leave of this Court, appellant appeals against that portion of the order of the Court a quo which dismissed the claims of infringement based upon the two container marks. There is no appeal against the dismissal of the claim
5 relating to the label mark.

Before considering the issue of infringement and the various submissions advanced by counsel in regard thereto it is necessary to make more detailed reference to the facts of the case.

I turn first to the two registered container trade marks. It was conceded before us by appellant's counsel that appellant's case in regard to trade mark no 80/4468 was, if anything, stronger than that based on trade mark no 80/5123 and that if it failed on no 80/4468 it would also fail on 80/5123. I shall, therefore, confine my attention to the former trade mark.

Among the papers filed by appellant is a certified extract from the trade mark register pertinent to trade mark no 80/4468. The representation of the mark in the certificate consists of a colour photograph
6 of one aspect of what appears to be a brown glass bottle. This aspect, or side, of the bottle is more or less rectangular in shape, the height of the bottle from its bottom to the base of its neck being approximately twice its width. The shoulders of the bottle curve convexly and upwards towards the base of the neck which is relatively short and squat. The neck tapers slightly towards the opening and, about half-way up, the neck thickens to form what appears to be a ring. On the shoulder of the bottle and situated centrally (on the aspect shown) there is a prominent protrusion in the form of an oval boss or seal on which can be made out (with the help of a magnifying glass) the word "COINTREAU". The bottle is represented without any cap or stopper. Nor does this aspect show any labels on the bottle. In the section relating to admissions, disclaimers, etc the certificate states that the mark consists of a "container f or goods" and that the
7 application is limited to the colour brown as shown on the representation.

Statutory provision for the registration of "a distinctive container for goods" was first introduced by the Act (see sec 2, definition of "mark"). The earlier legislation contained no such provision and indeed the English Trade Marks Act has no counterpart. Moreover, as recently as 1986 the House of Lords confirmed the rejection of an application to register a bottle as a trade mark (see Re Coca-Cola Co's Applications [1985] 2 All ER 274). In 1971 the definition of "mark" in the Act was amended by the deletion of the word "distinctive". In view of the fact that containers have thus been registrable as trade marks in this country since 1963 it is somewhat surprising that this is apparently the first case concerning a container trade mark to come before the courts.

The other types of mark which may become the

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subject-matter of a registered trade mark, as listed in the definition of "mark", are "a device, brand, heading, label, ticket, name, signature word, letter, numeral or any combination thereof". These can all be readily and properly represented for the purposes of registration in a two-dimensional manner. A container, however, is different. By its nature it is a three-dimensional object and conseguently a single two-dimensional drawing or photograph. cannot portray it in all its aspects and, therefore, in some instances may not give an adequate representation of it for registration purposes. As I shall show, the present case illustrates this point.

It is clearly of great importance, both to the proprietor of the trade mark ahd to the general public that the trade mark be adequately represented in the trade mark register. Reg 13 of the Trade Mark Regulations of 1971 prescribes how a mark, other than a word mark simpliciter,
9 should be represented for the purpose of an application for registration and consequently for registration itself. It emphasizes the need for the representation to be clear and distinct (reg 13(4) ) and it provides that where a representation cannot be given in the normal prescribed manner a specimen or copy of the trade mark may be sent with every application either of full size or reduced scale and in such form as the Registrar may think most convenient (reg 13(5) ). Reg 13(6) further empowers the Registrar, in exceptional cases, to call for the deposit of a specimen or copy of any trade mark that cannot conveniently be shown by a representation and may refer thereto in the register in such manner as he thinks fit. The regulation thus provides for considerable flexibility in the representation of marks.

Where in the case of a container mark it is important that the registered mark be represented in a

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three-dimensional manner and/or from different perspectives, I think that advantage should be taken of the different options provided by the regulations. These are wide enough, in my view, to cover perspective drawings or photographs from different angles. And, of course, in an exceptional case the Registrar may permit the deposit of a specimen container.

In the present case, unfortunately, none of this was done. All that was registered was the two dimensional photograph which I have described and which is on a fairly small scale. (The total height of the representation of the bottle ih the photograph is 7 cm.) This immediately gave rise to one of the issues debated by counsel before us and before the Court below, viz whether the registration relates merely to the one plane or aspect of the bottle portrayed in the register, as argued by respondent's counsel, or to the complete bottle in all its aspects, as

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argued by appellant's counsel. The problem confronting appellant's counsel was that the other aspects or planes of the bottle are not portrayed in the representation of the mark and, as respondent's counsel argued, the "other side" of the bottle, as it were, could theoretically be round or consist óf only two planes, to give but two examples. The significance of this lies in the fact that, as I shall show, the allegedly offending bottle used in the marketing of Alianca Triplice has four identical sides which give it a square shape, viewed in plan.

Appellant's counsel sought to meet these difficulties by contending that since what was registered as the trade mark was a container it obviously had to be a three-dimensional object; and that in so far as the representation of the mark as registered failed to portray the container in all its aspects the Court could and should look at the Cointreau bottle itself in order to get the
12 complete picture. This bottle is fully described in the papers and indeed the Judge a quo and the members of this Court were provided with specimens of the bottle. In parenthesis I might mention that the specimen Cointreau bottle given to the members of this Court differs in certain material respects from that handed in to and considered by the Court below. This tended to compound the problems confronting appellant's counsel, but in the result I do not think that these differences are of critical importance.

Appellant's counsel was not able to cite any authority for the proposition that the Court is entitled to look at an embodiment of the trade mark in order to supplement an inadequate representation of the mark in the register. I myself know of none and the proposition appears to me to run counter to principle. It is after all the mark as registered, i e as represented in the register, which delineates the proprietor's monopoly and proclaims to
13 the general public what the forbidden territory is. And it is the mark as registered which forms the basis of the comparison which must be made when it is alleged that someone else is using a mark which infringes the rights of the registered proprietor (see Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd [1984] ZASCA 51; 1984 (3) SA 623 (A), at 640 -1; Kerly's Law of Trade Marks and Trade Names 12 ed, pp 271-2). If the proprietor were entitled in infringement proceedings to add to or supplement the representation of the mark as registered, these principles would be wholly subverted and substantial inequity could arise. I am accordingly of the view that in this case the proper basis of comparison is appellant's mark as represented in the register and that it is not permissible to have regard to the container actually used by the appellant to market its goods. This may have unfortunate consequences for the appellant but that is how it has chosen to describe its monopoly and therefore it has only itself to blame.

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I have stated above that in general it is the registered trade mark which demarcates the proprietor's monopoly. In the case of a container trade mark this statement must be qualified. This is by reason of sec 10(2) of the Act which provides that no registration of a container as a trade mark -

"....shall prevent the bona fide use by others of any utilitarian or functional feature embodied in such container."

This monopoly thus does not extend, vis-a-vis a bona f ide user, to features embodied in the container which are of a utilitarian or functional nature.

Accordingly the application of sec 10(2) in any particular case requires a distinction to be drawn between those features of the container in question which are utilitarian or functional and those which are not. The latter, being features of unusual configuration, or
15 ornamentation or embellishment, would normally (seeing that the container, as a registered trade mark, is ex hypothesi distinctive) serve as labels of origin. The rationale underlying sec 10(2) would seem to be the need, which pervades trade mark law, to preserve a balance between the protection of the right of a manufacturer or merchant to identify his goods and 'distinguish them from those manufactured or sold by others and the recognition of the general right of free competition, including the right to copy. A container inevitably embodies features which are purely utilitarian or functional and have nothing to do with identifying source. Thus, to take a few obvious examples, a bottle for the marketing of a fluid product will usually have a relatively narrow neck and aperture through which the fluid can conveniently be poured; it will have a stopper to close the aperture when the contents are not being poured; it will normally have a flat base so that the bottle can
16 stand upright; it will have an enlarged hollow body in some shape or form to accommodate its contents; and it may have a handle for use in carrying the bottle and/or pouring its contents. Were registration of this bottle as a container trade mark to have the effect of creating a monopoly in regard to the whole bottle in all its features, then obviously the competitive rights of others would be unreasonably inhibited; and moreover the monopoly created would extend far beyond what was reguired in order to protect the proprietor's legitimate right to identify his goods. Postulating the right to have a container, as an entity, registered in the trade mark register, it is manifest that the monopoly created thereby must be restricted and not be permitted to extend to utilitarian or functional features.

The identification in a particular case of what features are utilitarian or functional may not always be
17 easy. Sec 10(2), its interpretation and effect, have not hitherto been considered by our courts. According to the Oxford Dictionary "utilitarian", in what appears to be the most apposite adjectival sense, means "of or pertaining to utility"; and the relevant meaning of "utility" seems to be

"The fact, character, or quality of being

useful or serviceable; fitness for some
desirable purpose or valuable end;

usefulness, serviceableness."

In the Afrikaans text (the Act was signed in English) the word used is "utiliteits". According to HAT "utiliteit" means "nuttigheid, nut, bruikbaarheid". The word "functional" is defined in the Oxford Dictionary (again I confine myself to relevant meanings) as:

"c. As related to the arts, esp. to architecture: designating work executed with a view to its utilitarian purpose; also, of

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artists, builders, etc .: concerned with the use intended for their product, not with traditional or other theories of design. (My emphasis.)
d. Pertaining to or serving a function (opp. functionless). Also practical, utilitarian."

The Afrikaans text uses the word "funksionele" which means -

"Wat betrekking het op of behoort tot funksie of funksies; wat 'n funksie vervul, uitoefen." (HAT).

As these dictionary definitions indicate there is little difference in meaning between "utilitarian" and "functional"; and at least a large measure of overlapping.

In argument we were referred to the law of the United States of America on this topic. A useful and authoritative exposition of this is to be found in the
19 decision of the United States Court of Customs and Patent Appeals in the case of In re Morton-Norwich Products, Inc 671 F. 2d 1332 (1982) . This case was concerned with the registrability as a trade mark of a container, of a particular configuration, for spray starch, soil and stain removers, spray cleaners and general grease removers. In the tribunal below it had been held that the configuration sought to be registered was dictated "primarily by functional (utilitarian) considerations" and was, therefore, not registrable. The correctness of this decision was the primary issue on appeal. It appears from the opinion (judgment) of Rich J, who spoke for the whole Court, that by judicial decision the Courts in the United States have come to accept that the entire design of an article (or its container) can, without other means of identification, function to identify the source of the article and be protected as a trade mark; but that at the same time it has

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been stipulated that such protection is limited to those designs of articles and containers, or features thereof, which are "non-functional". This reguirement of "non-functionality" has as its genesis the judicial theory that there exists a fundamental right to compete through imitation of a competitor's product (p 1336). This right to compete is, however, curtailed where the product or package design under consideration is "non-functional" and serves to identify its manufacturer or seller. As Rich J puts it-

"Thus, when a design is 'nonfunctional', the right to compete through imitation gives way, presumably upon balance of that right with the originator's right to prevent others from infringing upon an established symbol of trade identification". (p 1337).

Generally speaking the American cases appear to eguate functionality with utility (see Morton-Norwich Products case, supra, at 1338-9; Application of Deister
21 Concentrator Company 289 F 2d 496 (1961), at 500). As to the meaning of functionality, it was stated in the Deister case, supra, also a decision of the United States Court of Customs and Patent Appeals, that -

"A functronal feature has been defined in the Restatement of the Law of Torts, Section 742, as a feature of goods which affects their purpose, action, or performance, or the facility or economy of processing, handling or using them. The courts have accepted this definition and have also held 'functional' the shape, size, or form of an article which contributes to its utility, durability or effectiveness or the ease with which it serves its function."

I should, however, point out that the Restatement definition (contained only in the first edition, the second edition having omitted the section on trade marks) has been criticized as being overly broad and expansive. In Filter Dynamics International, Inc, et al v Astron Battery, Inc,

22 ,

et al 183 USPQ 102 (1974), a decision of the Illinois
Appellate Court, it was stated that (at p 109) -

"Functional features include those which contribute to efficiency or economy in manufacture and handling through the marketing process, and those which contribute to the product's (or container's) utility, durability or effectiveness or to the ease with which it serves its function or is handled by users."

It must be recognized that in many instances a container feature cannot be categorized as purely functional. (or utilitarian) or purely non-functional (or non-utilitarian). Thus, for example, a container may have a very unusual and distinctive overall shape or be equipped with a uniquely ornamental stopper. The overall shape is not wholly non-functional (or non-utilitarian) for it does serve to hold the contents of the container, but on the other hand because of its unusual and distinctive shape it
23 cannot be classed as purely functional (or utilitarian). And the same is true of the ornamental stopper. In these circumstances the issue as to whether the feature is functional (or utilitarian) or not becomes a matter of degree. As it was put in the Morton-Norwich Products case, supra, at 1338 -

"Most designs... result in the production of articles, containers, or features thereof which are indeed utilitarian, and examination into the possibility of trademark protection is not to the mere existence of utility, but to the degree of design utility".

Consequently the question generally is: does the feature in question serve primarily or predominantly or essentially a functional or utilitarian purpose or not? (See e g the Filter Dynamics case, supra, at 109; the Deister case, supra, at 504-6; but cf the Morton-Norwich Products case, supra, at 1343 footnote 4, also article by G Schuman
24 entitled "Trademark Protection of Container and Package Configurations - A Primer" in 59 (1983) Chicago Kent Law Review 779, at 797-800, 804-5).

In my opinion, the American case law on the subject of functionality referred to above provides helpful guidance on the interpretation and application of sec 10(2) of the Act.

I come now to the alleged infringement of appellant's trade mark. The bottle in which Alianca Triplice is marketed is brown in colour, generally square in plan,with rectangular sides and curved shoulders having the same or very similar shape and general proportions as those of the aspect of the bottle represented in appellant's trade mark registration. The neck of the Alianca Triplice bottle is slightly squatter than that of appellant's trade mark as represented and does not exhibit the ring referred to above. Nor does it have the seal or boss which appears
25 on the trade mark as represented. There are labels on opposite sides of what I shall for convenience call the "Alianca bottle". The principal label, which almost covers one side of the bottle, displays prominently the names "Triplice" and "Alianca". It also contains the f ull name of Caves Alianca and a distinctive emblem and indicates, inter alia, that the product is a liqueur produced and bottled in Portugal. The other label repeats the emblem (which here has the words "Caves Alianca" on a scroll underneath it) and also contains three inscriptions, evidently in the Portuguese language, which appear to extol the virtues of the product.

Appellant's case on infringement is based primarily on the provisions of sec 44(1) (a) of the Act and alternatively on sec 44(1)(b). The former subsection deals with infringemeht consisting of unauthorized use of a mark as a trade mark; the latter with infringement consisting of
26 unauthorized use in the course of trade of a mark otherwise than as a trademark. The respondent denied that it used the Alianca bottle, as such, as a trade mark, but conceded that it used it in the course of trade otherwise than as a trade mark. I am inclined to think that, in view of the labels on the Alianca bottle which prominently feature the name of the product and proclaim its origin, the use of the bottle as such constituted use in the course of trade otherwise than as a trade mark; with the result that the infringement, if any, would fall under sec 44(1)(b). It is not necessary, however, to decide this issue for under each of these subsections it is necessary for a plaintiff to establish, inter alia, that the mark used by the defendant so nearly resembles the registered trade mark as to be likely to deceive or cause confusion; and, as I shall show, appellant in this case failed to do this.

The determination of the issue of deceptive

27 resemblance or confusion normally involves a comparison between the mark used by the defendant and the registered mark, but, as I have indicated, in the case of a container mark account must also be taken of the provisions of sec 10(2). Accordingly, in the case of a container mark this comparison gives rise to three questions:

(a) is there a resemblance between the defendant's mark and the registered mark such as to be likely to cause deception or confusion?
(b) to what extent does this resemblance reside in utilitarian or functional features in the registered mark? and
(c) has the defendant's use of such features in his mark been bona fide.

When one comes to make a comparison between the Alianca bottle and appellant's registered mark one is

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immediately confronted by the probiem to which I have already alluded, viz that the representation of the registered mark does not give a three-dimensional portrayal of the bottle in question. This leaves one in the dark as to what the shape (in plan) of the registered mark is and what the appearance of the other sides of the bottle is. Such uncertainty virtually precludes comparison; or, at any rate, makes it impossible for one to say that the Alianca bottle does resemble the registered mark. On this basis appellant's case on infringement is still-born.

I shall, however, proceed on the assumption (in appellant's favour) that one is entitled to rely upon common sense and common experience in interpreting such a trade mark representation and that such reliance would lead one to the conclusion that the appellant's trade mark consists of a bottle, sguare in plan, its four sides all being as portrayed in the representation, save that the seal or boss
29 appears on one side only. Upon that assumption and bearing in mind that the trade mark registration contains no qualifications as to size, there is undoubtedly a resemblance between the Alianca bottle and the container constituting the registered mark. But is it such as to be likely to cause deception or confusion?

The meaning of deception or 'confusion and the nature of the comparison that has to be made to determine this issue are by now well-established (see, for example, the exposition in Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd [1984] ZASCA 51; 1984 (3) SA 623 (A), at 640 H - 641 E) and need not be recapitulated. The evidence in this case shows that though the liqueur trade is a competitive one the market for liqueurs is relatively limited. A liqueur is an expensive type of liquor. It is consumed less frequently than other liquor products and usually as an after-dinner drink with coffee. It appeals to the more educated and

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sophisticated sections of the communitý and purchasers of liqueurs are generally discerning buyers, very brand conscious and careful to seek out the brand they want. Figures provided by both parties indicate that Cointreau liqueur has far greater sales in South Africa than Alianca Triplice. Thus in the years 1983 to 1986 inclusive the annual sales of Cointreau in South Africa, according to the records of its local distributor, were (in numbers of cases): 6378, 6082, 4734 and 3479 respectively; whereas the figures for the annual quantities of the Alianca Triplice imported into South Africa over that period were: 130, 80, 80 and 100 cases respectively. Cointreau has a general appeal in the community, whefeas Alianca Triplice appeals to and is purchased primarily by the Portuguese section of the community. Moreover, the members of the Portuguese community are not significant purchasers of Cointreau. Cointreau is substantially more expensive than Alianca
31 Triplice.

According to one deponent (whose affidavit was filed by respondent), a Mr M Fridjohn, an expert on the liguor trade, liqueurs are generally marketed in a bottle with a dark-coloured glass, such as brown, green or black. Rectangular shaped bottles are commonly used in the spirit and ligueur trades and, as such, are not, in Fridjohn's opinion, distinctive of particular brands. Included in his affidavit are details and pictures of a number of such rectangular bottles. Fridjohn further expresses the view that in order to make such a bottle distinctive of a particular brand of liguor it is necessary to add some further feature, such as decorative matter embodied in the face of the bottle or the incorporation of a distinctive seal. Fridjohn points out that a squat rectangular bottle has certain practical advantages in the trade in that it is possible, because of its dimensions, to pack such a bottle

32 into boxes of smaller dimensions than those which would be required for the packing of taller, round bottles.

It seems to me that the only situation where there could be the slightest possibility of deception or confusion arising from the use by respondent of the Alianca bottle is in the type of retail sales outlet where customers select their purchases from the shelf. There is, in my view, no possibility of deception or confusion being created in the minds of wholesale or retail dealers. Indeed it was not argued that there was. Nor do I think that deception or confusion can arise when a diner at a restaurant or at his club orders a Cointreau with his coffee. On the shelf of the liquor supermarket the possibility of confusion is, in my opinion, slight and remote. Bearing in mind that the purchaser of liqueurs is an educated, sophisticated, discerning person, who is also very brand conscious and careful to seek out what he wants, there is, in my view, no
33 likelihood of such person being induced by respondent's use of the Alianca bottle into thinking that Alianca Triplice emanates from the proprietor of the registered (Cointreau) mark or that there is a material connection between them. Nor do I think that, as argued by appellant's counsel, there is any likelihood that any such purchaser would be confused as to the origin of the goods or as to the existence or non-existence of such a connection.

In this regard it is important to note that (a) the resemblance between the Alianca bottle (the mark alleged to infringe) and the registered mark lies only in the colour, general shape and proportions of the bottle; and (b) that unlike the Alianca bottle, the bottle which is the subject-matter of the registered mark has the distinctive boss or seal which not only catches the eye but also bears embossed upon it the name "COINTREAU". As to (a), the evidence shows that in the liqueur trade brown is one of the

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limited range of colours normally used for containers; and that squat rectangular bottles are commonly used in the ligueur and spirits trade. In the circumstances there seems to be no basis for holding that the consumer would be deceived or confused (in the trade mark sense) by the colour and shape of the Alianca bottle simpliciter. As to (b), the prominence and distinctiveness of the eye-catching boss, which is absent in the Alianca bottle, is in itself a cogent factor in negativing the likelihood of deception or confusion.

For these reasons I hold that appellant failed to establish that respondent's use of the Alianca bottle was likely to give rise to deception or confusion and that on this ground the infringement action must fail.

In any event, I am of the view that the features which are common to the Alianca bottle and the registered mark, viz. colour, shape and general proportions, are
35 primarily utilitarian or functional features used bona fide by the respondent (and by Caves Alianca); and that, therefore, appellant is prevented by the provisions of sec 10(2) of the Act from claiming infringement of its registered mark. The colour is one of the limited range of colours used for liqueur bottles and is clearly functional. Indeed, I did not understand appellant's counsel to place any reliance on colour. The shape is also one of a limited range of basic shapes usually employed in the trade. It is not arbitrary or unusual; nor is it ornamental or in any way particularly distinctive. As the evidence shows, such a shape has certain practical advantages in handling and packing the product. As I have emphasized, the distinctiveness of the registered mark resides essentially in the boss, which is absent from the Alianca bottle. There was no suggestion by appellant in argument that respondent's use of the Alianca bottle was not bona fide. Nor could
36 there be, in view of the long history of such user, years before the registered mark came into existence.

For these reasons, I am of the view that the Court a quo correctly concluded that whether sec 44(1)(a) or sec 44(1)(b) be considered there was no infringement of the appellant's container marks. In the circumstances it is not necessary for me to deal with the other points argued by respondent on appeal.

The appeal is dismissed with costs, including the costs of two counsel.

M M CORBETT

NESTADT JA)

VAN DEN HEEVER AJA)

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