Shape matters in hourglass bottle dispute

IT’S all in the shape, five judges of the Supreme Court of Appeal have found.

They were confronted with the hourglass shape of water bottles – that of Tupperware’s Eco bottle versus the water bottle of South African company Buhle Brands.

Tupperware earlier turned to the North Gauteng High Court, Pretoria, saying Buhle Brands’ water bottle infringed on its trademark. The company felt that the public would confuse the two, and argued that Buhle should be interdicted from using the shape as well.

The court found that an hourglass bottle was just another hourglass bottle and ordered the cancellation of Tupperware’s trademark registration, based on Buhle counterclaim.

Tupperware turned to the appeal court. In a judgment on Thursday, the Supreme Court interdicted Buhle from selling and marketing its bottles with the same shape.

The first appellant, Dart Industries Incorporated, and the second appellant, Tupperware Southern Africa (Pty) Ltd, are part of the international Tupperware group of companies, which registered their Eco Bottle as a trademark in around 2015.

In 2019, Buhle Brands – a company that sells home-ware, cosmetics, toiletries, health and wellness, and fashion products – started to market and sell the infringing water bottle.

The Supreme Court was confronted with the question whether Tupperware’s mark was distinctive. The court said that to answer the question, it must bear in mind that the function of a trademark was to indicate the origin of the goods or services. Thus, the public perception of a shape mark was crucial.

Judge Tati Makgoka said that on the one hand, the public might recognise a product by its shape. That was not sufficient for the shape to play the role of a trademark. On the other hand, the public might rely on the distinctiveness of the shape as an indicator of the source of goods. It was the latter instance that denoted the shape as a trademark.

He said he shared the view of the high court that Buhle Brands’ water bottle and the Eco bottle were virtually identical.

“The only significant difference between the competing bottles is the embossing of the words ‘Tupperware’ and ‘Botle Buhle’ on the side and on the cap of the respective bottles. But these are inconspicuous, and do little or nothing to distinguish the two products… It seems to me that the overall design of the Buhle Brands’ water bottle was not to distinguish it from that of Tupperware, but rather to associate the two.

“In other words, Buhle seems to have strained every nerve to associate its water bottle with the Eco bottle,” Judge Makgoka said.

He added that people who had attended a Tupperware party would have become aware that the Eco bottle was a Tupperware product.

“But this is not decisive. The key issue is whether the relevant members of the public would likely make a business connection between the two… Where a potential customer encounters a consultant who sells both products, they may end up making an association between the two.”

He noted that the two products were also marketed online by sales consultants, and that some of the consultants sold Tupperware and Buhle Brands products. In some instances, they had the two catalogues depicted side by side.

“This… sows the seeds for the likelihood of confusion between the two products.”