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 context)
- Statutes Referenced: Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”); Copyright Act (Cap 63, 2006 Rev Ed) (“Copyright Act”)
- Key Topics (as reflected in the judgment headings): 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
- 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.
- Judgment Length: 80 pages; 44,091 words
Summary
This High Court decision concerns a dispute between Nestlé and Petra Foods over the use of product shapes and packaging for chocolate wafer bars. The plaintiffs asserted intellectual property rights in the three-dimensional “Kit Kat” shapes—specifically a “Two Fingers Shape” (two bars attached by a thin base) and a “Four Fingers Shape” (four bars attached by a thin base)—registered as trade marks in Singapore. The defendants, who imported and distributed chocolate wafer products under the “Take-It” brand, were alleged to infringe these trade marks through the shape of the product and through packaging representations.
The case also involved counterclaims by the defendants seeking to invalidate and/or revoke the plaintiffs’ registered shapes. The defendants argued, among other things, that the shapes were not capable of distinguishing the goods, were devoid of distinctive character, and fell within statutory exclusions for shapes resulting from the nature of the goods, shapes necessary to obtain a technical result, and shapes giving substantial value to the goods. They further pleaded non-use-based revocation and alleged that the plaintiffs’ threats of proceedings were groundless.
Although the extract provided is truncated, the central legal architecture is clear: the court had to determine (i) whether the defendants’ “Take-It” products and packaging infringed the registered trade marks and any well-known trade mark rights, and (ii) whether the registered shapes should be revoked or invalidated on the defendants’ statutory grounds. The court’s approach reflects a careful balancing of trade mark protection for product shapes against the policy that functional or non-distinctive shapes should remain available for competition.
What Were the Facts of This Case?
The plaintiffs belong to the Nestlé group. The first plaintiff, Societe Des Produits Nestlé SA, is a Swiss public company. The second plaintiff, Nestle Singapore (Pte) Ltd, is incorporated in Singapore. The plaintiffs are proprietors of trade marks in Singapore relating to chocolate covered wafer products under the KIT KAT brand. The dispute focuses on the three-dimensional shape of the wafer bars themselves, which the plaintiffs registered as trade marks on the basis of acquired distinctiveness through long use since the 1970s.
In particular, the plaintiffs relied on two registered three-dimensional shape trade marks. The “Two Fingers Shape” consists of two bars attached to one another by a thin base, as represented in the application. The “Four Fingers Shape” consists of four bars attached by a thin base. Both were registered in Class 30 for chocolate confectionery, including chocolate coated confectionery blocks or bars and chocolate wafer biscuits. The plaintiffs also claimed an unregistered trade mark referred to as the “Two Fingers Composite Mark”, and they asserted ownership of an “Artistic Work” created in the late 1990s, which they treated as an artistic work for copyright purposes.
The defendants belong to the Petra Foods group. The first defendant, Petra Foods Limited, is incorporated in Singapore and is the parent company of the second defendant, Delfi Singapore Pte Ltd. The second defendant imported and distributed a chocolate product under the trade mark “Take-It” (also referred to as “Delfi Take-It”). The “Take-It” product was manufactured by PT Ceres under licence from Delfi SA, both of which are linked to the defendants’ corporate group and manufacturing chain.
According to the plaintiffs, the defendants’ “Take-It” products infringed the registered shapes in two ways: first, by the shape of the product itself (the “2-Fingers Take-It” alleged to infringe the “Two Fingers Shape”, and the “4-Fingers Take-It” alleged to infringe the “Four Fingers Shape”); and second, by packaging representations. The plaintiffs also advanced well-known trade mark claims, seeking injunctions against the defendants’ use of the shapes and packaging representations on the basis that the shapes were well known to the public in Singapore. In addition, the plaintiffs pleaded copyright infringement relating to the packaging representation of the “Artistic Work”.
What Were the Key Legal Issues?
The first cluster of issues concerned trade mark infringement. The court had to assess whether the defendants’ product shapes and packaging representations fell within the scope of infringement provisions under the TMA, including ss 27(1) and/or 27(2)(b) for product shape infringement and s 27(2)(b) for packaging representations. The analysis required the court to consider how a registered three-dimensional shape trade mark is compared with an allegedly infringing sign, and what degree of similarity is necessary to establish infringement.
A second cluster of issues concerned the plaintiffs’ well-known trade mark claims. The plaintiffs sought relief under ss 55(2), 55(3)(a) and/or 55(3)(b) of the TMA, which require the court to determine whether the relevant mark is well known in Singapore and whether the defendants’ conduct would justify restraint even where the infringement analysis might otherwise differ. This required the court to examine evidence of reputation and public recognition, and to connect that reputation to the statutory protection for well-known marks.
The third cluster of issues arose from the defendants’ counterclaim for revocation and invalidation. The defendants pleaded that the registered shapes should be invalidated or revoked for multiple reasons: lack of distinctiveness and failure to meet registration criteria; breach of statutory exclusions for shapes that result from the nature of the goods, are necessary to obtain a technical result, or give substantial value to the goods; and revocation for non-use (including non-use within five years after completion of registration and suspension of use for an uninterrupted period of five years). The court also had to address the defendants’ claim that the plaintiffs’ threats of proceedings were groundless under s 35(2) of the TMA.
How Did the Court Analyse the Issues?
At the outset, the court framed the dispute as a question of when 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 product shapes sit at the intersection of trade mark law and competition policy. The court’s observation that imitation is not inherently wrong underscores that the legal inquiry is not whether the defendants copied, but whether the copying infringes legally protected rights. In other words, the court treated the case as one about the boundaries of IP rights rather than about morality or unfairness in abstract terms.
On trade mark infringement, the court’s reasoning would necessarily have involved a comparison between the registered shapes (the “Two Fingers Shape” and “Four Fingers Shape”) and the defendants’ “Take-It” products and packaging representations. For three-dimensional shape marks, the analysis typically turns on whether the defendant’s sign uses the shape in a manner that is likely to cause confusion or otherwise falls within the statutory infringement framework. The plaintiffs relied on ss 27(1) and 27(2)(b), suggesting they argued both for infringement where the sign is identical or similar to the registered mark and for infringement where the sign is used in relation to goods that are identical or similar, with the requisite mental element or likelihood of confusion depending on the statutory provision.
In parallel, the defendants’ counterclaim required the court to examine whether the registered shapes should remain enforceable. The statutory grounds pleaded by the defendants reflect classic limitations on shape trade marks. First, the defendants argued that the shapes were not trade marks within the meaning of the TMA because they were not capable of distinguishing the goods. Second, they argued that the shapes were devoid of distinctive character. These arguments are particularly relevant where the mark consists exclusively of a shape, because shapes are often inherently less likely to function as indicators of origin unless distinctiveness is acquired through use.
Third, the defendants invoked the TMA exclusions for functional or value-related shapes: shapes resulting from the nature of the goods themselves, shapes necessary to obtain a technical result, and shapes giving substantial value to the goods. These provisions embody a policy that trade mark law should not be used to monopolise product features that competitors need to use for practical reasons or that contribute materially to consumer appeal in a way that should remain open to competition. The court’s analysis would therefore have required careful attention to the evidence on what aspects of the shape are functional, what aspects are aesthetic or value-creating, and what aspects serve as an origin indicator.
Fourth, the defendants pleaded revocation for non-use. Under the TMA, revocation can be sought where a registered mark is not put to genuine use in the course of trade in Singapore within the statutory period after registration, or where use is suspended for an uninterrupted period of five years. This issue is often decisive because it can remove the basis for infringement claims even if the mark is otherwise valid. The court would have had to evaluate the plaintiffs’ evidence of use in Singapore, including the nature of the use, the continuity of use, and whether the use was “genuine” in the relevant statutory sense.
Finally, the court had to consider the well-known trade mark claims and the copyright claim. For well-known marks, the court would have assessed whether the relevant shapes were well known to the public at large in Singapore and whether the defendants’ use would fall within the protective ambit of ss 55(2) and 55(3). For copyright, the plaintiffs alleged that packaging representations infringed an “Artistic Work” under ss 32 and/or 33 of the Copyright Act. The court would have needed to determine the subsistence and ownership of copyright, the scope of the work, and whether the defendants’ packaging representation reproduced a substantial part or otherwise fell within the infringement provisions. The judgment headings also indicate that copyright defences and industrial design considerations were part of the overall analytical landscape.
What Was the Outcome?
The provided extract does not include the dispositive orders. However, the case metadata confirms that the plaintiffs’ position was ultimately tested through appellate review: 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). This appellate outcome strongly suggests that the High Court’s conclusions on infringement and/or the validity of the registered shapes were upheld, at least in the material respects that the appellants sought to challenge.
Practically, the outcome would have determined whether Nestlé could obtain injunctions and other relief restraining Petra Foods from using the “Take-It” product shapes and packaging representations in Singapore, and whether the defendants succeeded in revoking or invalidating the registered shape trade marks. The practical effect would also include the continued enforceability (or removal) of the plaintiffs’ trade mark rights in the “Two Fingers Shape” and “Four Fingers Shape”, and the resolution of the copyright claim relating to the packaging representation.
Why Does This Case Matter?
This case is significant for practitioners because it addresses the enforceability of trade marks that consist of product shapes—an area where courts must reconcile two competing objectives. On one hand, trade mark law protects signs that function as indicators of origin and rewards investment in branding. On the other hand, shape trade marks cannot be used to create de facto monopolies over functional or commercially valuable product features that competitors should be free to use.
The decision is also important because it illustrates how courts treat “acquired distinctiveness” for shape marks. The plaintiffs’ marks were registered on the basis of acquired distinctiveness through use since the 1970s. The defendants’ counterclaim attacked that premise through statutory invalidity and revocation grounds. For lawyers, this highlights the evidential and doctrinal importance of demonstrating genuine use, distinctiveness, and the non-functionality of the claimed shape features.
Finally, the case matters because it sits within a broader global pattern of “Kit Kat shape” litigation. The court’s reasoning on the boundaries of IP rights in product shapes will be of interest to counsel advising on clearance, enforcement, and defensive strategies in Singapore. It also provides a structured template for how to plead and contest shape trade mark cases: infringement analysis on the one hand, and validity/revocation and policy-based exclusions on the other.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), including 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”), including ss 32 and 33 (as pleaded)
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.