A trade mark registration is only as strong as the strategy behind it. The recent appeal between National Brands Limited and Continental Biscuit Manufacturers (Pty) Ltd illustrates this perfectly.

At first glance, the dispute appears to be about two crispbreads. In reality, it is about something far more fundamental: what, exactly, does a trade mark registration protect?

The dispute centres on the distinctive appearance of the well-known PROVITA crispbread. When Continental Biscuit Manufacturers introduced its SNACTIVE product in 2012, National Brands alleged that the biscuit itself closely resembled the PROVITA biscuit. According to National Brands, the similarities extended beyond the fact that both products are rectangular crispbreads. They included the biscuit's proportions, rounded corners, docking holes and overall visual impression.

The First Decision

National Brands sought an interdict preventing Continental Biscuit Manufacturers from manufacturing, marketing and selling the SNACTIVE biscuits. The court of first instance, however, dismissed the application.

The court accepted that National Brands owns registered rights in the PROVITA trade mark, but concluded that those rights do not extend to the biscuit itself or its physical characteristics. It also attached considerable weight to the differences between the words PROVITA and SNACTIVE, as well as the parties' respective packaging.

As KISCH IP noted at the time, that conclusion rested uneasily with the trade mark registration on which National Brands was relying.

Looking at the Registration Itself

The registration in question is Trade Mark No. 1966/01938. Importantly, it is not simply a registration for the word PROVITA. It is a device mark depicting the word PROVITA applied to a rectangular biscuit with rounded corners and perforations, registered in class 30 for bread, biscuits and bakery products.

The registration also carries the following endorsement:

"Registration of this trade mark shall give no right to the exclusive use of a device of a BISCUIT as such otherwise than as shown in the application."

That wording creates room for debate.

It is clear that National Brands cannot claim a monopoly over biscuits generally, or even over every rectangular crispbread. The real question is whether the registration protects the particular biscuit device shown in the application.

There is room to argue that the endorsement could have been drafted more precisely. For example, it could have stated expressly that the shape, configuration and combination of features depicted in the illustrated biscuit, including its perforations, which constitute essential and distinctive elements of the registered mark. That wording would have left far less scope for competing interpretations.

The protection may also have been stronger had National Brands filed a separate application for the biscuit device excluding the PROVITA word mark. This is of particular strategic importance where the appearance of a product is intended to identify its commercial origin independently of its name and in such circumstances a standalone device registration often provides invaluable additional protection.

The Full Bench takes a Different View

On appeal, the court interpreted the rights flowing from the registration very differently. Rather than treating it as a word mark with an accompanying illustration, the court recognised the registration as device mark which confers rights in respect of the shape and configuration of the biscuit, concluding that the registration protects not only the word PROVITA, but also the distinctive appearance of the biscuit depicted in the registration.

The court found that the court a quo misdirected itself by focusing almost exclusively on the word mark, rather than considering the registered trade mark as a whole.

Having examined the competing products, the court concluded that the SNACTIVE biscuit reproduces a striking combination of features associated with the registered PROVITA biscuit, including its rectangular shape, rounded corners, closely similar perforation pattern and embossed central motif. Although the SNACTIVE name and packaging differ from those used by National Brands, those differences, the court found, do not outweigh the similarities between the biscuits themselves.

The appeal therefore succeeded. The court interdicted Continental Biscuit Manufacturers from infringing the registered PROVITA BISCUIT device mark under sections 34(1)(a) and 34(1)(c) of the Trade Marks Act. It also granted passing-off relief, prohibiting the company from marketing its products in a manner that suggests an association with National Brands, by using the SNACTIVE biscuit shape and appearance or any confusingly or deceptively similar mark or get-up.

The court further ordered Continental Biscuit Manufacturers to remove the offending biscuit shape and get-up, together with any confusingly similar branding, from its packaging, signage, printed material, websites and social media platforms.

The Bigger Lesson

The PROVITA case is a reminder that effective trade mark strategy begins long before litigation.

Businesses often focus on protecting a product's name, but in some cases the product itself can become a badge of origin. A distinctive shape, configuration, surface pattern or overall get-up may, through consistent use, become just as recognisable to consumers as the word mark displayed on the packaging. Where that is the objective, the filing strategy should be developed accordingly, with appropriate protection being sought for those non-traditional elements from the outset.

The decision also underscores the importance of careful drafting. Endorsements are frequently included to clarify the scope of a registration or to overcome objections raised during examination of the application for registration. If drafted imprecisely, however, they may create ambiguity rather than certainty, providing competitors with an opportunity to dispute the true extent of the registered rights.

Ultimately, the PROVITA appeal is about more than crispbread. It demonstrates that decisions made at the filing stage—including what is claimed, how it is described, and how any limitations are expressed—can have significant consequences years later when those rights are scrutinised and enforced before the courts.