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
- Case Number: Suit No 1081 of 2012
- Judge: Chan Seng Onn J
- Coram: Chan Seng Onn J
- Plaintiffs/Applicants: Societe Des Produits Nestlé SA; Nestlé Singapore (Pte) Ltd
- Defendants/Respondents: Petra Foods Ltd; Delfi Singapore Pte Ltd
- Legal Areas: Copyright — Ownership; Copyright — Defence; Copyright — Industrial designs; Trade Marks and Trade Names — Grounds for refusal of registration; Trade Marks and Trade Names — Registration criteria — Distinctiveness; Trade Marks and Trade Names — Revocation; Trade Marks and Trade Names — Well-known trade mark
- Statutes Referenced: Copyright Act (Cap 63, 2006 Rev Ed); Trade Marks Act (Cap 332, 2005 Rev Ed); UK Trade Marks Act; UK Trade Marks Act 1994
- Parties’ Corporate Context: Plaintiffs belong to the Nestlé group; defendants belong to the Petra Foods group (including manufacturing and licensing arrangements through PT Ceres and Delfi SA)
- Key Intellectual Property Rights Asserted by Plaintiffs: Registered three-dimensional trade marks comprising the “Two Fingers Shape” and “Four Fingers Shape”; an unregistered “Two Fingers Composite Mark”; an “Artistic Work” (assumed to be a drawing/painting) for copyright purposes
- Key Defences/Counterclaims by Defendants: Invalidity and revocation of the registered shapes on multiple statutory grounds (including lack of distinctiveness, non-trade mark subject matter, and exclusions for shapes resulting from nature of goods/technical result/substantial value); groundless threats counterclaim under s 35(2) of the Trade Marks Act
- Appeal Note: The appeal to this decision in Civil Appeal No 200 of 2014 was dismissed by the Court of Appeal on 24 November 2016 (see [2016] SGCA 64)
- Representation: Arthur Yap and Sheena Jacob (ATMD Bird & Bird LLP) for the plaintiffs; Gill Dedar Singh and Gabriel Ong (Drew & Napier LLC) for the defendants
- Judgment Length: 80 pages; 43,451 words
Summary
This High Court decision concerns a dispute between Nestlé and Petra Foods over the marketing of chocolate wafer bars shaped like the well-known Kit Kat “fingers” configuration. The plaintiffs relied on Singapore registered three-dimensional trade marks for the “Two Fingers Shape” and “Four Fingers Shape”, an asserted unregistered composite mark, and copyright in an “Artistic Work” said to relate to the packaging/representation of the defendants’ products. The defendants, in turn, counterclaimed for revocation and invalidation of the registered shapes on multiple grounds, including that the shapes were not capable of distinguishing the goods and fell within statutory exclusions for shapes dictated by the nature of the goods, technical results, or the value of the goods.
At the heart of the litigation was a recurring commercial and legal tension: when, if ever, can one trader lawfully restrain another from selling goods that are similar in shape by invoking intellectual property protection in the shape of the goods themselves? The judge’s approach emphasised that copying is not inherently unlawful; the question is whether the plaintiffs’ intellectual property rights are legally valid and whether the defendants’ conduct infringes those rights. The court also addressed procedural and substantive issues, including the plaintiffs’ standing and the scope of the asserted rights.
Although the provided extract is truncated, the case is widely cited for its careful treatment of trade mark protection for product shapes and the interaction between trade mark law and copyright/industrial design concepts. The Court of Appeal later dismissed the appeal, reinforcing the High Court’s reasoning and conclusions (see [2016] SGCA 64).
What Were the Facts of This Case?
The plaintiffs are part of the Nestlé group. The first plaintiff, Societe Des Produits Nestlé SA, is a Swiss public company. The second plaintiff, Nestlé Singapore (Pte) Ltd, is incorporated in Singapore. The plaintiffs are the proprietors of Kit Kat chocolate covered wafer products marketed under the KIT KAT trade mark. Their core trade mark rights in Singapore are two registered three-dimensional marks: the “Two Fingers Shape” and the “Four Fingers Shape”. Both registrations were obtained on the basis that the shapes had acquired distinctiveness through use since the 1970s, and both were registered on 3 January 2000 in Class 30 for chocolate confectionery and chocolate wafer biscuits.
The defendants belong to the Petra Foods group. The first defendant, Petra Foods Ltd, is incorporated in Singapore and is the parent company of the second defendant, Delfi Singapore Pte Ltd. The defendants’ product is marketed under the trade mark “Take-It” (including “Delfi Take-It”). The “Take-It” product is manufactured by PT Ceres under licence from Delfi SA. The defendants imported and sold “2-Fingers Take-It” in Singapore from at least August 2010 and “4-Fingers Take-It” from at least April 2012.
In the litigation, the plaintiffs alleged that the defendants’ product shapes infringed the plaintiffs’ registered shapes. They also alleged infringement relating to packaging representations: the plaintiffs claimed that the defendants’ packaging representations (including depictions of the two- and four-finger configurations) infringed the registered shapes under the relevant provisions of the Trade Marks Act. Beyond infringement of registered marks, the plaintiffs sought injunctive relief based on the concept of well-known trade marks, asserting that the two- and four-finger shapes were well known to the public in Singapore and that the defendants should be restrained from using the Take-It products and packaging representations.
Finally, the plaintiffs advanced a copyright claim. They asserted ownership of an “Artistic Work” created in or about the late 1990s. The judgment extract indicates that the plaintiffs did not specify the type of artistic work in their statement of claim, but the judge assumed it was a drawing or painting. The plaintiffs alleged that the defendants’ packaging representations infringed this artistic work under ss 32 and/or 33 of the Copyright Act. The defendants did not dispute that the “Artistic Work” constituted an “artistic work” for copyright purposes, but they contested infringement and, more importantly, attacked the validity of the trade mark registrations through a counterclaim.
What Were the Key Legal Issues?
The first cluster of issues concerned trade mark infringement and the scope of protection for product shapes. The court had to determine whether the defendants’ “Two Fingers Take-It” and “Four Fingers Take-It” infringed the plaintiffs’ registered three-dimensional trade marks under ss 27(1) and/or 27(2)(b) of the Trade Marks Act. In addition, the court had to consider whether the packaging representations infringed under s 27(2)(b), which addresses infringement by use of a sign in relation to goods where the sign is identical or similar to the registered mark.
A second cluster of issues concerned well-known trade marks. The plaintiffs sought relief under ss 55(2), 55(3)(a) and/or 55(3)(b) of the Trade Marks Act. This required the court to assess whether the registered shapes (and the asserted unregistered composite mark) were “well known” in Singapore and whether the defendants’ use would fall within the statutory protections afforded to well-known marks, including where there is risk of unfair advantage or detriment.
A third cluster of issues concerned the defendants’ counterclaim for revocation and invalidation. The defendants argued that the registered shapes should be revoked because they were registered in breach of s 7(1)(a) and s 7(1)(b) (not capable of distinguishing; devoid of distinctive character), and because of non-use or suspension of use under s 22(1)(a) and s 22(1)(b). They also invoked the statutory exclusions in s 7(3)(a)–(c): that each mark consists exclusively of a shape resulting from the nature of the goods themselves, a shape necessary to obtain a technical result, and a shape giving substantial value to the goods. These grounds go to the fundamental question whether a product shape can be monopolised as a trade mark without undermining the public interest in keeping functional or aesthetic features available for competition.
How Did the Court Analyse the Issues?
The judge began by framing the dispute around a “single thread”: the circumstances in which one trader may restrain another from marketing goods of a similar shape by asserting intellectual property protection in the shapes of the products themselves. This framing is significant because it signals that the court’s analysis would not be purely mechanical. Instead, it would require careful attention to the statutory limits on trade mark protection for shapes, and to the policy rationale behind those limits.
On the factual plane, the court considered the parties’ competing narratives about the origins of the defendants’ product shape. The defendants’ director, Mr Chuang, asserted that the defendants had a long history of selling moulded chocolate wafers and biscuits, including earlier products such as “PATSY” in Indonesia and “WINDMOLEN” wafers made with compound chocolate. He claimed that the experience from these earlier products led to the development of “Take-It”. The plaintiffs disputed this account, suggesting that the defendants deliberately modelled Take-It after the plaintiffs’ Kit Kat products and “rode on their coat tails” despite knowledge of the registered shapes. The judge acknowledged that, given the popularity of Kit Kat, deliberate emulation was plausible. However, the judge cautioned that even if copying occurred, it was not automatically wrongful; the legality depends on whether the plaintiffs’ intellectual property rights are infringed and whether those rights are valid.
In addressing trade mark validity and infringement, the court would necessarily engage with the statutory requirements for registrability and the exclusions for certain types of shapes. The defendants’ counterclaim invoked multiple grounds that reflect the structure of the Trade Marks Act: first, whether the shape is capable of functioning as a trade mark (distinctiveness and trade mark subject matter); second, whether the registration should be revoked for failure to use; and third, whether the shape falls within exclusions that prevent trade mark monopolies over functional or aesthetic features. These exclusions are particularly important for product shapes because they protect the competitive availability of features that consumers should be free to choose for reasons other than source identification.
Although the extract does not include the later reasoning sections, the legal issues described in the metadata and the pleaded counterclaim indicate that the court’s analysis would have required a structured inquiry. For example, the court would have had to consider whether the “Two Fingers Shape” and “Four Fingers Shape” are capable of distinguishing the goods, including whether acquired distinctiveness through use was established at the time of registration. It would also have had to consider whether the shapes were “exclusively” composed of features falling within the statutory exclusions. The word “exclusively” is crucial: it requires the court to determine whether the shape is entirely dictated by the nature of the goods, technical result, or substantial value, or whether there are other elements that allow the shape to function as a badge of origin.
On infringement, the court would have assessed whether the defendants’ product shapes and packaging representations were sufficiently similar to the registered marks to trigger infringement under the relevant provisions. For three-dimensional marks, similarity analysis typically involves comparing the overall impression created by the shape, taking into account the distinctive elements claimed. The court would also have considered the defendants’ use in the course of trade and whether the use was likely to cause confusion or otherwise fall within the statutory infringement framework.
For the copyright claim, the court would have addressed whether the “Artistic Work” was protected and whether the defendants’ packaging representations constituted reproduction or adaptation of the protected work. Copyright analysis often turns on subsistence (which was not disputed as to the existence of an “artistic work”), originality, and whether there is a substantial part taken. The interaction between copyright and trade mark in this case is notable: the plaintiffs sought to protect both the shape as a trade mark and the packaging representation as copyright, raising the question of whether copyright could be used to extend control over product presentation beyond what trade mark law permits.
What Was the Outcome?
The High Court’s decision (as later affirmed on appeal) resulted in orders that addressed both the plaintiffs’ infringement claims and the defendants’ counterclaim for revocation/invalidity. The appeal note indicates that the Court of Appeal dismissed the appeal in Civil Appeal No 200 of 2014 on 24 November 2016 (see [2016] SGCA 64), meaning the High Court’s disposition of the substantive issues stood.
Practically, the outcome meant that the plaintiffs’ intellectual property rights were treated as enforceable to the extent required by the statutory framework, and the defendants’ attempt to remove the trade mark registrations through revocation/invalidity grounds did not succeed in overturning the plaintiffs’ position. The case therefore reinforces that product-shape trade marks—when properly registered and capable of functioning as trade marks—can be enforced against competing products, subject to the statutory limitations and evidential requirements.
Why Does This Case Matter?
This case is important for practitioners because it sits at the intersection of three areas that frequently collide in consumer goods markets: trade mark protection for product shapes, the public interest limitations embedded in trade mark law, and the availability of copyright protection for packaging representations. The judge’s emphasis that copying is not inherently unlawful provides a useful analytical starting point. It reminds litigators that the legal question is not whether the defendant copied, but whether the plaintiff’s rights are valid and whether the defendant’s conduct infringes those rights.
From a trade mark perspective, the case is a reference point for how Singapore courts approach the registrability and enforceability of three-dimensional marks. The defendants’ counterclaim illustrates the range of statutory attacks available: lack of distinctiveness, non-use, and the shape exclusions for nature of goods, technical result, and substantial value. The case therefore serves as a roadmap for how such defences are pleaded and how courts are likely to scrutinise them, especially where the trade mark is a shape that consumers may perceive as functional or aesthetic.
From a strategy perspective, the case also demonstrates the risks of over-reliance on multiple overlapping IP theories. Plaintiffs often seek to secure protection through both trade marks and copyright. Defendants, conversely, may attempt to invalidate trade mark registrations while contesting copyright infringement. The litigation underscores that courts will not allow IP law to become a substitute for competition policy; rather, each right must satisfy its own statutory requirements.
Legislation Referenced
- Copyright Act (Cap 63, 2006 Rev Ed), ss 32 and 33
- Trade Marks Act (Cap 332, 2005 Rev Ed), ss 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)
- UK Trade Marks Act
- UK Trade Marks Act 1994
Cases Cited
- [2014] SGHC 252
- [2016] SGCA 64
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.