Case Details
- Citation: [2019] SGIPOS 19
- Court: Intellectual Property Office of Singapore
- Date: 2019-12-12
- Judges: David Llewelyn
- Plaintiff/Applicant: Ferrero S.p.A.
- Defendant/Respondent: -
- Legal Areas: Trade marks and trade names – Ex Parte Hearing
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1994
- Cases Cited: [2008] SGHC 158, [2011] SGIPOS 6, [2019] SGIPOS 19
- Judgment Length: 18 pages, 7,277 words
Summary
This case concerns an application by Ferrero S.p.A. to register the shape and packaging of one of its confectionery products as a 3D trade mark in Singapore. The Intellectual Property Office of Singapore (IPOS) initially refused the application under Section 7(1)(b) of the Trade Marks Act, finding that the mark lacked inherent distinctiveness as an indication of trade origin. Ferrero appealed, submitting evidence to show that the mark had acquired distinctiveness through extensive use and promotion. After a lengthy back-and-forth, the IPOS hearing officer ultimately upheld the refusal, concluding that Ferrero's evidence was insufficient to demonstrate that the shape and packaging alone were recognized by consumers as a badge of origin for Ferrero's goods.
What Were the Facts of This Case?
Ferrero S.p.A., an Italian confectionery company, applied to register the 3D shape and packaging of one of its products as a trade mark in Singapore. The application covered "Pastry and confectionery, pralines, stuffed wafer, chocolate and chocolate-based products, ices" in Class 30.
The application mark consisted of a distinctive 3D shape and packaging, as depicted in the judgment. On 2 September 2014, the IPOS examiner issued a provisional refusal of the application under Section 7(1)(b) of the Trade Marks Act, finding that the mark was devoid of any inherent distinctive character as an indication of trade origin.
Ferrero responded by submitting evidence in the form of two statutory declarations, seeking to demonstrate that the mark had acquired distinctiveness through extensive use and promotion of the product in the marketplace. However, the examiner maintained the refusal, concluding that the evidence was insufficient to show the mark functioned as a badge of origin for Ferrero's goods.
Ferrero appealed the refusal, and the matter proceeded to an ex parte hearing before an IPOS hearing officer.
What Were the Key Legal Issues?
The key legal issue in this case was whether the 3D shape and packaging applied for by Ferrero qualified for trade mark registration under the Singapore Trade Marks Act.
Specifically, the hearing officer had to determine whether the mark was "devoid of any distinctive character" under Section 7(1)(b) of the Act, or whether Ferrero had provided sufficient evidence to show the mark had acquired distinctiveness as a result of its use, as permitted under Section 7(2).
The hearing officer also had to consider the relevance of prior IPOS decisions on the registrability of 3D shape marks, such as the Société des Produits Nestlé v Petra Foods Ltd ("Kit Kat") case.
How Did the Court Analyse the Issues?
The hearing officer began by outlining the legal framework under the Trade Marks Act. He noted that while the Act defines a "trade mark" broadly to include shapes and packaging, not all such signs will necessarily function as indicators of trade origin and qualify for registration.
Under Section 7(1)(b), the key question is whether the mark is "devoid of any distinctive character" when considered in relation to the relevant goods, without regard to the applicant's actual use or promotion of the mark. The hearing officer explained that this assessment must be made objectively, based on the average consumer's perception, and not based on the applicant's marketing efforts.
The hearing officer then turned to analyze Ferrero's evidence. He noted that the statutory declarations provided information about Ferrero's extensive sales and promotion of its products bearing the distinctive word mark "Ferrero Rocher". However, the evidence did not clearly demonstrate that consumers recognized the 3D shape and packaging alone as a badge of origin for Ferrero's goods, separate from the well-known word mark.
The hearing officer acknowledged that through extensive use, a shape or packaging can become recognized by consumers as an indication of trade origin, even without a word mark. However, he found that Ferrero's evidence fell short of establishing this for the application mark. The hearing officer concluded that the mark remained "devoid of any distinctive character" under Section 7(1)(b) and was therefore not registrable.
What Was the Outcome?
The IPOS hearing officer upheld the examiner's refusal to register Ferrero's 3D shape and packaging mark. He found that the evidence submitted by Ferrero was insufficient to show the mark had acquired distinctiveness as an indication of trade origin for its goods, as required under Section 7(2) of the Trade Marks Act.
As a result, Ferrero's application for registration of the 3D mark was ultimately rejected. The company was not granted a registered trade mark monopoly over the distinctive shape and packaging of its Ferrero Rocher product in Singapore.
Why Does This Case Matter?
This case provides important guidance on the registration of non-traditional trade marks, such as shapes and packaging, under the Singapore Trade Marks Act. It reinforces the principle that not all signs that fall within the broad definition of a "trade mark" will automatically qualify for registration.
The hearing officer's analysis highlights the high bar that applicants must meet to demonstrate that a shape or packaging has acquired distinctiveness as a badge of origin, separate from any associated word marks or branding. Mere extensive use and promotion of a product is not sufficient – the applicant must show that consumers recognize the shape or packaging itself as an indication of trade source.
This case is also significant in its discussion of the relevant legal principles, drawing on prior IPOS and Court of Appeal decisions such as the "Kit Kat" case. It provides a useful framework for evaluating the registrability of non-traditional trade marks, which will be relevant for both trade mark applicants and examiners going forward.
Legislation Referenced
Cases Cited
- [2008] SGHC 158
- [2011] SGIPOS 6
- [2019] SGIPOS 19
Source Documents
This article analyses [2019] SGIPOS 19 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.