Case Details
- Citation: [2014] SGHC 252
- Case Title: Societe Des Produits Nestlé SA and another v Petra Foods Ltd and another
- Court: High Court of the Republic of Singapore
- Decision Date: 28 November 2014
- Coram: Chan Seng Onn J
- Case Number: Suit No 1081 of 2012
- Plaintiffs/Applicants: Societe Des Produits Nestlé SA; Nestlé Singapore (Pte) Ltd
- Defendants/Respondents: Petra Foods Ltd; Delfi Singapore Pte Ltd
- Counsel for Plaintiffs: Arthur Yap and Sheena Jacob (ATMD Bird & Bird LLP)
- Counsel for Defendants: Gill Dedar Singh and Gabriel Ong (Drew & Napier LLC)
- Legal Areas: Intellectual Property (Trade Marks; Copyright; Industrial Designs)
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”); Copyright Act (Cap 63, 2006 Rev Ed) (“Copyright Act”)
- Key Issues (as reflected in the extract): Trade mark infringement (product and packaging); well-known trade marks; revocation/invalidity of shape marks; grounds of refusal/registration criteria; genuine use; “shape resulting from the nature of the goods”; technical result; substantial value; groundless threats; copyright infringement of an artistic work
- Judgment Length: 80 pages; 44,091 words
- Related Appeal: Appeal to this decision in Civil Appeal No 200 of 2014 dismissed by the Court of Appeal on 24 November 2016 (see [2016] SGCA 64)
- Notable Context: The dispute concerns three-dimensional shape trade marks associated with “Kit Kat” wafer bars (the “Two Fingers Shape” and “Four Fingers Shape”) and the defendants’ “Take-It” products marketed in Singapore
Summary
This High Court decision addresses a familiar but legally intricate problem in intellectual property law: when, and to what extent, a trader may prevent a competitor from marketing goods that share a similar product shape by relying on intellectual property rights in the shape itself. The plaintiffs, belonging to the Nestlé group, asserted Singapore trade mark rights in the three-dimensional shapes of Kit Kat wafer bars (the “Two Fingers Shape” and “Four Fingers Shape”), together with claims relating to well-known trade marks and copyright infringement in an alleged artistic work. The defendants, belonging to the Petra Foods group, imported and sold chocolate wafer bars under the “Take-It” mark, produced under licence by an affiliated manufacturer.
The court’s analysis proceeded through multiple layers: infringement of registered shape marks (including infringement through packaging representations), the availability of relief for well-known trade marks, and the defendants’ counterclaim seeking revocation or invalidation of the registered shapes on various statutory grounds. The extract provided indicates that the court also dealt with a preliminary issue concerning the second plaintiff’s locus standi or cause of action. Although the full reasoning is not reproduced in the extract, the structure and pleaded grounds show that the case turned on the legal requirements for shape trade marks, the limits imposed by the Trade Marks Act on registering shapes that are inherently functional or non-distinctive, and the evidential burden on parties asserting infringement and well-known status.
What Were the Facts of This Case?
The plaintiffs were Societe Des Produits Nestlé SA (a Swiss public company) and Nestlé Singapore (Pte) Ltd (a Singapore company). The plaintiffs claimed to be proprietors of Kit Kat chocolate covered wafer products in Singapore. Their core trade mark rights were in two registered three-dimensional shape marks: the “Two Fingers Shape” and the “Four Fingers Shape”. Both were registered in Class 30 (chocolate confectionery, including chocolate coated confectionery blocks or bars and chocolate wafer biscuits). The marks were registered on the basis that they had acquired distinctiveness through use since the 1970s. The “Two Fingers Shape” consisted of two bars attached by a thin base; the “Four Fingers Shape” consisted of four bars attached by a thin base.
In addition to the registered shapes, the first plaintiff asserted ownership of an unregistered trade mark described as the “Two Fingers Composite Mark”. The plaintiffs also asserted ownership of an “artistic work” created in the late 1990s, which they treated as an artistic work capable of copyright protection. The extract indicates that the “artistic work” was not precisely specified in the statement of claim, but the court assumed it was a species of drawing or painting. The plaintiffs alleged that the defendants’ packaging and representations infringed this artistic work.
The defendants were Petra Foods Ltd (a Singapore public company) and Delfi Singapore Pte Ltd (the second defendant), which imported and distributed the defendants’ chocolate product under the “Take-It” or “Delfi Take-It” trade mark. The “Take-It” product was manufactured by PT Ceres under licence from Delfi SA. The defendants’ product included a two-fingers version (“2-Fingers Take-It”) and a four-fingers version (“4-Fingers Take-It”). The extract records that the second defendant did not dispute importing and selling the two-fingers product from at least August 2010 and the four-fingers product from at least April 2012.
The plaintiffs’ infringement allegations were twofold. First, they alleged that the defendants’ product shapes infringed the registered shape marks: the two-fingers Take-It infringed the Two Fingers Shape, and the four-fingers Take-It infringed the Four Fingers Shape. Second, they alleged that packaging representations—described as “Representation of the 2-Fingers Take-It” and “Representation of the 4-Fingers Take-It”—also infringed the registered shapes. In parallel, the plaintiffs pleaded that the registered shapes were well known to the public in Singapore and sought injunctions under provisions dealing with well-known trade marks. The defendants, for their part, counterclaimed for revocation or invalidation of the registered shapes on multiple statutory grounds, including lack of distinctiveness, failure to qualify as trade marks, and functional or aesthetic exclusions relating to the nature of the goods, technical results, and substantial value.
What Were the Key Legal Issues?
The first cluster of issues concerned trade mark infringement. The court had to determine whether the defendants’ imported and sold products infringed the plaintiffs’ registered three-dimensional shape marks under the relevant provisions of the Trade Marks Act. This included assessing infringement not only by the product itself but also by packaging representations that allegedly depicted the shape. The legal questions involved the scope of protection afforded to registered shape marks and the statutory tests for infringement under ss 27(1) and/or 27(2)(b) (as pleaded by the plaintiffs).
A second cluster of issues concerned well-known trade marks. The plaintiffs sought additional protection by arguing that the Two Fingers Shape and the Four Fingers Shape were well known in Singapore and that the defendants should be restrained from using the Take-It products and packaging representations under ss 55(2) and 55(3)(a) and/or 55(3)(b) of the TMA. The court therefore had to consider what it means for a shape trade mark to be “well known” and what level of recognition and evidence is required, as well as how the well-known trade mark provisions interact with infringement and distinctiveness requirements.
A third, and potentially decisive, cluster of issues arose from the defendants’ counterclaim. The defendants sought revocation or invalidation of the registered shapes on grounds that the marks were registered in breach of statutory requirements (including that they were not capable of distinguishing the goods, were devoid of distinctive character, or fell within exclusions such as shapes resulting from the nature of the goods, shapes necessary to obtain a technical result, and shapes giving substantial value to the goods). They also pleaded non-genuine use and suspension of use for uninterrupted periods of five years, invoking revocation provisions under s 22(1)(a) and s 22(1)(b) of the TMA. Finally, the defendants counterclaimed that the plaintiffs’ threats of legal proceedings were groundless threats under s 35(2) of the TMA.
How Did the Court Analyse the Issues?
The extract indicates that the court began by identifying the “single thread” running through the case: the circumstances in which one trader may legitimately restrain another trader from marketing goods of a similar shape by asserting intellectual property protection in the shapes of the products themselves. This framing is important because shape marks sit at the intersection of trade mark law and competition policy. If shape marks are too easily enforced, they can effectively grant a monopoly over product design features that should remain available for competitors, especially where the shape is functional, inherent to the product, or contributes substantial value.
Accordingly, the court’s analysis would have required careful attention to the statutory architecture of the Trade Marks Act. The defendants’ counterclaim invoked multiple grounds that are designed to prevent registration (or to revoke registration) of shapes that do not function as trade marks in the legal sense. For example, the defendants pleaded that the marks were registered in breach of s 7(1)(a) because they were not trade marks within the meaning of s 2(1), and in breach of s 7(1)(b) because they were devoid of distinctive character. These grounds reflect the principle that a trade mark must be capable of distinguishing the goods of one undertaking from those of another. In the context of product shapes, distinctiveness is often difficult to establish because consumers may perceive the shape as a feature of the product rather than an indicator of origin.
The defendants also pleaded exclusions under s 7(3)(a)–(c): that each registered shape consists exclusively of a shape resulting from the nature of the goods themselves; exclusively of a shape necessary to obtain a technical result; and exclusively of a shape that gives substantial value to the goods. These provisions are critical in shape mark cases because they prevent trade mark law from being used to protect functional or aesthetic product features. The court would therefore have had to consider whether the registered shapes were, in substance, protected as indicators of origin (distinctive trade marks) or whether they were effectively being used to secure a design monopoly over the product’s appearance.
In addition, the court would have addressed the revocation grounds relating to genuine use. The defendants pleaded that the marks should be revoked pursuant to s 22(1)(a) because they were not put to genuine use in the course of trade in Singapore within five years following completion of registration, and pursuant to s 22(1)(b) because use was suspended for an uninterrupted period of five years. This introduces an evidential and doctrinal dimension: even if a shape mark is registered, the proprietor must demonstrate genuine commercial use in Singapore within the statutory timeframes. The court would have assessed the plaintiffs’ evidence of marketing, sales, and consumer exposure to determine whether the use requirement was satisfied.
On infringement, the court would have applied the statutory tests for infringement of registered trade marks, including the question of whether the defendants’ use was likely to cause confusion or fell within the statutory definition of infringement. The plaintiffs’ pleaded reliance on ss 27(1) and 27(2)(b) suggests they argued both direct infringement and infringement through use of a sign that is identical or similar to the registered mark in relation to identical or similar goods, with the relevant mental element or likelihood of confusion depending on the subsection. The packaging representation claims also raise a practical issue: whether depicting a three-dimensional shape in packaging (including representations with signs removed) constitutes use of the shape as a trade mark, and whether that depiction is sufficiently connected to the registered shape to fall within the infringement provisions.
Finally, the court would have considered the copyright claim. The plaintiffs alleged that the defendants’ packaging representations infringed an “artistic work” under ss 32 and/or 33 of the Copyright Act. Although the extract does not provide the court’s detailed reasoning on copyright, the legal analysis in such cases typically involves determining subsistence of copyright in the work, ownership, and whether the defendant’s work reproduces a substantial part of the protected expression. The court would also have had to consider whether the alleged artistic work was sufficiently identified and whether the defendants’ packaging representations were a reproduction or adaptation of the protected drawing or painting.
What Was the Outcome?
The extract provided does not include the final orders. However, it does indicate that the case proceeded through a preliminary issue concerning the second plaintiff’s locus standi or cause of action, and that the court ultimately dealt with both infringement claims and the defendants’ counterclaims for revocation/invalidity. The existence of a subsequent Court of Appeal dismissal (Civil Appeal No 200 of 2014 dismissed on 24 November 2016; see [2016] SGCA 64) suggests that the High Court’s conclusions were upheld on appeal, at least in material respects.
Practically, the outcome of a case of this type will determine whether the plaintiffs’ shape marks remain enforceable in Singapore against the defendants’ “Take-It” products and packaging, and whether the defendants succeed in removing the marks from the register through revocation. It also affects whether the plaintiffs can obtain injunctions and damages (or other remedies) for trade mark and copyright infringement, and whether the defendants can obtain relief for groundless threats under s 35(2) of the TMA.
Why Does This Case Matter?
This case is significant because it illustrates the legal tension between protecting trade mark rights in product shapes and preserving competitive freedom. Shape marks are inherently controversial: they can function as origin indicators, but they can also operate as de facto monopolies over product design. The court’s approach—highlighting the “single thread” of when one trader may restrain another using intellectual property protection in the shapes of the products themselves—reflects the need to balance intellectual property protection with the statutory exclusions for functional and non-distinctive shapes.
For practitioners, the case is a useful reference point on how Singapore courts may treat the registration and enforcement of three-dimensional shape marks, especially where the marks are registered on the basis of acquired distinctiveness through use. It also underscores the importance of genuine use evidence and the availability of revocation grounds. Even where a mark has been registered for years, the proprietor’s enforcement position can be undermined if the mark is vulnerable to revocation for non-use or for falling within statutory exclusions.
From a litigation strategy perspective, the case also demonstrates the multi-front nature of modern IP disputes. Here, the plaintiffs pursued trade mark infringement, well-known trade mark protection, and copyright infringement, while the defendants countered with invalidity/revocation grounds and a groundless threats claim. Lawyers advising brand owners or competitors should therefore anticipate that shape mark disputes will often involve both infringement and validity battles, with the latter potentially determining the former.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”): ss 2(1), 7(1)(a), 7(1)(b), 7(3)(a), 7(3)(b), 7(3)(c), 22(1)(a), 22(1)(b), 27(1), 27(2)(b), 35(2), 55(2), 55(3)(a), 55(3)(b)
- Copyright Act (Cap 63, 2006 Rev Ed) (“Copyright Act”): ss 32, 33
Cases Cited
Source Documents
This article analyses [2014] SGHC 252 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.