The SCA decision in the case of Nestlé v Iffco is a big one. Here are the most important findings:
• Nestlé’s 3D registrations for the shape of the Kit Kat bar were valid. They did not contravene the provision that says you can’t register a trade mark that consists exclusively of a shape that’s necessary to obtain a technical result. Although the shape did have functional features, it also had non-functional features such as the plinth or apron.
• Iffco had infringed Nestlé’s 3D registrations for the shape of the Kit Kat bar. In two ways – by selling a chocolate bar that was similar in appearance to Kit Kat, and by selling it in packaging that featured a visual representation of the product (the court said that this was not ‘descriptive use’). This was a likelihood of confusion-style infringement claim (section 34(1) (a)).
• Iffco was also guilty of dilution-style infringement (section 34(1) (c)) because there was detriment or harm and this was self-evident: ‘The loss of the unique shape of Nestlé’s Kit Kat bar as a distinctive attribute will inevitably result in a loss of advertising or selling power to Nestle… this will clearly result in “blurring” of Nestlé’s finger wafer shape trade mark… economic harm to Nestlé is consequently self-evident from the primary facts.’
This finding is significant because dilution-style infringement has been dormant in SA ever since 2005, when the Constitutional Court held that there had been no dilution-style infringement in a satirical t-shirt case involving SAB because there was no likelihood of economic loss. It’s worth noting that in the Kit Kat case there was a likelihood of confusion, so the dilution-style infringement claim wasn’t strictly necessary. It remains to be seen whether a classic dilution-style infringement claim – in other words one where the parties don’t compete and there is no likelihood of confusion as to origin – will become any easier.
• Iffco hadn’t infringed the slogan registration Have a Break, Have a Kit Kat by using the brand names Quanta Break and Tiffany Break – Nestlé had disclaimed the word ‘break’ in its registration. This use also wasn’t causing harm or detriment, so there was no dilution-style infringement either.
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