Is South African trademark law out of shape? A comparative analysis of shape marks, in light of the recent SCA and CJEU Kit Kat decisions
CITATION: Hobson-Jones, S. & Karjiker, S. 2016. Is South African trademark law out of shape? A comparative analysis of shape marks, in light of the recent SCA and CJEU Kit Kat decisions. Stellenbosch Law Review, 27(3):575-598.
The original publication is available at https://journals.co.za/content/journal/jlc_slr
This article examines the recent litigation concerning the shape of the Kit Kat chocolate bar in South Africa, Europe and the UK in order to determine whether the South African legal position relating to shapes as trademarks differs from that in Europe and the UK, given the fact that the respective legislation is substantially similar. The Kit Kat shape-mark cases provided a unique opportunity to determine if South African law in this area differs as it concerned the same basic set of facts. Given the legislative similarities, it would be logical to assume that a consistent result would follow. However, despite the legislative similarities, the SCA decision in the Kit Kat case appears to be inconsistent with the European and UK decisions. The first area of possible difference is the scope of the “technical result” exclusion from registrability as a trademark. While South Africa may consider the exclusion of a registration on the basis of a technical effect in relation to both the manufacturing process and the end-use of a good, only technical effects concerning the end-use are relevant in Europe and the UK. Second, the SCA held that the “technical result” exclusion only applies if the shape consists “exclusively” of a shape necessary to obtain a technical result, and, thus, will not apply if a shape has both functional and non-functional features. In contrast, in Europe and the UK a registration will be denied if any of the “technical result” exclusions apply to any feature, even if there may also be a non-functional element. Finally, the SCA appears to have adopted a lower standard for distinctiveness. It was sufficient if the average consumer recognised the Kit Kat shape and associated it with Nestle. However, in Europe and the UK the shape will only be distinctive if the consumers rely on the shape as a badge of origin.