Case Details
- Citation: [2016] SGCA 64
- Case Title: Societe Des Produits Nestlé SA and another v Petra Foods Limited and another
- Court: Court of Appeal of the Republic of Singapore
- Date of Decision: 24 November 2016
- Court Number: Civil Appeal No 200 of 2014
- Coram: Sundaresh Menon CJ; Chao Hick Tin JA; Andrew Phang Boon Leong JA; Tay Yong Kwang JA; George Wei J
- Plaintiff/Applicant: Societe Des Produits Nestlé SA; Nestlé Singapore (Pte) Ltd
- Defendant/Respondent: Petra Foods Limited; Delfi Singapore Pte Ltd
- Legal Areas: Trade Marks and Trade Names — Grounds for refusal of registration; Trade Marks and Trade Names — Registration criteria; Trade Marks and Trade Names — Revocation
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”)
- Key Provisions Discussed: ss 7(1)(a), 7(1)(b), 7(2), 7(3)(a), 7(3)(b) (technical result prohibition), 7(3)(c), 22(1)(a), 22(1)(b), 35(2)
- Judgment Length: 42 pages; 26,012 words
- Procedural History: Appeal from High Court decision in [2014] SGHC 252
- Counsel for Appellants: Alvin Yeo SC and Chen Xinping (instructed); Sheena Jacob and Wang Zheng Just (Bird & Bird ATMD LLP)
- Counsel for Respondents: Davinder Singh SC; Gill Dedar Singh; Gabriel Ong (Drew & Napier LLC)
- Amicus Curiae: Prof Ng-Loy Wee Loon SC (Hon Caus)
- Trade Marks/Marks in Issue: Registered three-dimensional shape marks for (i) “Two-Finger Shape” and (ii) “Four-Finger Shape” of chocolate wafer bars sold under KIT KAT
- Respondents’ Competing Products: “Take-It” chocolate wafer products sold under TAKE-IT and DELFI TAKE-IT
Summary
In Societe Des Produits Nestlé SA and another v Petra Foods Limited and another [2016] SGCA 64, the Court of Appeal considered whether two registered three-dimensional “shape marks” for chocolate wafer bars were valid and enforceable. The appellants (Nestlé) owned Singapore registrations for the “Two-Finger Mark” and “Four-Finger Mark”, which corresponded to the familiar KIT KAT bar shapes. The respondents (Petra Foods and Delfi Singapore) counterclaimed for invalidation and/or revocation, and the High Court had already invalidated the registrations on the basis that the shapes were not inherently distinctive and were barred by the “technical result” prohibition.
On appeal, the Court of Appeal affirmed the High Court’s approach to the distinctiveness requirements for shape marks and the operation of the statutory exclusions in the Trade Marks Act. The court emphasised that shape marks are treated with particular caution because they risk converting product features into perpetual monopolies. The decision underscores that, for unconventional marks such as product shapes, proprietors must show that the sign functions as a trade mark—ie, that consumers perceive it as indicating origin—and must also overcome statutory bars that prevent registration where the shape is dictated by technical function or confers substantial value.
What Were the Facts of This Case?
The dispute concerned the registration and enforcement of two three-dimensional shape trade marks used in connection with chocolate-coated wafer confectionery bars. Nestlé, through its Swiss parent company and Singapore subsidiary, distributed chocolate wafer products under the well-known KIT KAT trade mark. In Singapore, Nestlé held registrations for the shapes of the KIT KAT bars: one shape comprised two “fingers” (the “Two-Finger Shape”), and the other comprised four “fingers” (the “Four-Finger Shape”). The registrations were for goods in Nice Class 30, described as chocolate confectionery, including chocolate-coated confectionery blocks or bars and chocolate wafer biscuits.
Petra Foods and Delfi Singapore, the respondents, belonged to the Petra Foods group. They imported and distributed chocolate products under the TAKE-IT and DELFI TAKE-IT trade marks. Petra’s products were also moulded chocolate wafer bars, and the respondents’ “Take-It” products were shaped in a way that closely resembled the KIT KAT bar shapes when unwrapped. Nestlé alleged that Petra’s products infringed Nestlé’s intellectual property rights, including its trade mark rights in the registered shapes.
Procedurally, Nestlé brought claims for trade mark infringement (including claims relating to both well-known and registered marks) and also pursued a copyright infringement claim relating to packaging. Petra responded by counterclaiming for groundless threats of trade mark infringement under s 35(2) of the TMA. More importantly for the appeal, Petra sought invalidation and/or revocation of Nestlé’s registrations for the Two-Finger and Four-Finger shape marks. The counterclaim pleaded multiple statutory grounds, including lack of distinctiveness, failure to qualify as a trade mark, and prohibitions against registering shapes that result from the nature of the goods, are necessary to obtain a technical result, or give substantial value to the goods.
The High Court, in [2014] SGHC 252, invalidated the registrations. It held that the shapes were not inherently distinctive under s 7(1)(b) of the TMA and that Nestlé had not proved acquired distinctiveness under s 7(2). It also held that the shapes fell afoul of the “technical result” prohibition in s 7(3)(b). Nestlé appealed to the Court of Appeal, seeking to reverse those rulings and to restore its ability to enforce the shape marks against Petra’s competing products.
What Were the Key Legal Issues?
The appeal raised two principal clusters of issues. First, the court had to determine whether the registered shape marks satisfied the statutory requirement of distinctiveness. For shape marks, the question is not merely whether consumers recognise the product, but whether the shape functions as a trade mark—ie, whether it indicates origin rather than merely reflecting the product’s appearance or market norms. This required the court to examine both inherent distinctiveness under s 7(1)(b) and acquired distinctiveness under s 7(2).
Second, the court had to consider the scope and application of the “technical result” prohibition under s 7(3)(b) of the TMA. This provision prevents registration of shapes that consist exclusively of a shape which is necessary to obtain a technical result. The legal issue was whether the essential features of the registered shapes were dictated by technical considerations (such as manufacturing or functional constraints) rather than serving as an indicator of origin. The court’s analysis necessarily involved identifying the “essential features” of the shape marks and assessing whether each essential feature was necessary for a technical result.
Although the counterclaim also pleaded revocation for non-use and other grounds, the appeal’s focus (as reflected in the extract) was on trade mark infringement, invalidation, and/or revocation of the registrations, particularly the statutory bars and distinctiveness requirements that had led to invalidation below.
How Did the Court Analyse the Issues?
The Court of Appeal began by situating shape marks within a broader policy context. It noted that the law has historically viewed attempts to obtain protection over three-dimensional marks with suspicion. The concern is that trade mark law should not be used to convert product features into a perpetual monopoly. The court referred to earlier authorities expressing the principle that a trade mark must be distinct from the product itself, and to the House of Lords’ warning in Coca-Cola about expanding intellectual property boundaries and creating monopoly over containers. This policy backdrop informs the strictness with which courts examine shape marks.
Against that backdrop, the court examined inherent distinctiveness under s 7(1)(b). The High Court had found that the average consumer of chocolate products would not pay particular attention to the shape as an indicator of origin because the shapes did not depart significantly from norms and customs in the chocolate confectionery sector. The Court of Appeal endorsed the idea that, for inherent distinctiveness, the shape must do more than be visually noticeable; it must be capable of functioning as a trade mark in the eyes of consumers. In other words, the shape must “denote trade origin” rather than simply represent a plausible product form.
On acquired distinctiveness under s 7(2), the court scrutinised the evidence. The High Court had accepted that the correct test was articulated in Nestlé (EWHC), where the proprietor must show that it used the sign in such a way that consumers came to rely on it as indicating origin. The Court of Appeal’s reasoning (as reflected in the extract) indicates that mere recognition or association is insufficient. Even if consumers recognise the shape as belonging to a particular commercial source, the proprietor must show that consumers rely on the shape as an origin indicator, not merely as a familiar product feature.
In this case, the High Court had accepted that market surveys showed a high degree of recognition of Nestlé’s products, but it held that this did not establish acquired distinctiveness. The Court of Appeal’s analysis proceeded on the basis that the statutory requirement is functional: the sign must have acquired the capacity to identify origin. Recognition that does not translate into trade mark function cannot cure the lack of inherent distinctiveness. This approach is particularly demanding for shape marks because consumers may naturally focus on taste, packaging, branding, and other conventional indicators rather than on the shape itself.
Turning to s 7(3)(b), the court addressed the “technical result” prohibition. The High Court had found that the registered shapes fell within the exclusion because each and every one of the essential features was necessary for a specific technical result. While the extract is truncated, the reasoning pattern is clear: the court identifies the essential features of the shape mark and then asks whether the shape consists exclusively of features necessary to obtain a technical result. If so, the shape cannot be registered, regardless of consumer recognition, because the statute aims to prevent functional or technical product features from being monopolised through trade mark registration.
In applying the “essential features” approach, the court’s analysis reflects a careful separation between (i) features that are necessary to achieve a technical outcome and (ii) features that are arbitrary or ornamental and can serve as an origin identifier. The legal consequence is significant: even if the shape is distinctive in a commercial sense, it may still be barred if it is functionally necessary. This is consistent with the policy concern that trade mark law should not be used to extend protection beyond its proper role.
What Was the Outcome?
The Court of Appeal upheld the invalidation of Nestlé’s registered shape marks. In practical terms, Nestlé’s registrations for the Two-Finger and Four-Finger shapes could not stand because they were not inherently distinctive and were also excluded by the technical result prohibition. As a result, Nestlé’s trade mark infringement claims necessarily failed, since the registrations were invalid.
The decision also meant that Petra’s counterclaims succeeded to the extent of invalidating the registrations. The practical effect for the parties was that Petra could continue to market its Take-It products without infringing Nestlé’s invalidated shape rights, while Nestlé lost the ability to rely on those specific shape registrations for enforcement in Singapore.
Why Does This Case Matter?
This case is important for practitioners because it clarifies how Singapore courts will treat shape marks—particularly those that correspond closely to familiar product forms. The decision reinforces that distinctiveness is not satisfied merely by consumer recognition of the product. For shape marks, proprietors must demonstrate that consumers perceive the shape as an origin indicator. This is a higher evidential and conceptual threshold than simply showing that the public can identify the product as coming from a particular undertaking.
From a registration strategy perspective, the case also highlights the risk of relying on product shapes that may be functionally or technically motivated. The “technical result” prohibition operates as a hard statutory bar. Even where a shape has been used for decades and is commercially successful, it may still be unregistrable if its essential features are necessary to obtain a technical result. This has direct implications for brand owners seeking to secure trade mark protection for packaging or product configurations: they must be prepared to show that the shape is not exclusively functional or technically dictated.
Finally, the case contributes to the broader jurisprudence on the boundary between trade mark protection and other forms of intellectual property. By emphasising the policy against perpetual monopolies over product features, the Court of Appeal’s reasoning supports a principled approach: trade mark law protects signs that perform an origin-identifying function, but it does not provide a substitute for patent or design protection where the shape is dictated by technical function or product value.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed), including:
- Section 2(1) (definition of “trade mark”)
- Section 7(1)(a) (not a trade mark / incapable of distinguishing)
- Section 7(1)(b) (devoid of distinctive character)
- Section 7(2) (acquired distinctiveness)
- Section 7(3)(a) (shape resulting from the nature of the goods)
- Section 7(3)(b) (technical result prohibition)
- Section 7(3)(c) (shape giving substantial value to the goods)
- Section 22(1)(a) and (b) (revocation for non-use / suspension of use)
- Section 35(2) (groundless threats of infringement proceedings)
Cases Cited
- [2014] SGHC 252
- [2016] SGCA 64
- Bongrain SA’s Trade Mark Application [2005] RPC 14
- Société des Produits Nestlé SA v Cadbury UK Ltd [2014] ETMR 17
- Re James Trade Mark, James v Soulby (1886) 33 Ch D 392
- Re Coca-Cola Co’s Application [1986] 2 All ER 274
Source Documents
This article analyses [2016] SGCA 64 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.