Most trade marks comprise a name or a logo, but in this case, Ferrero S.P.A. sought to register a “3-dimensional ball shape chocolate wrapped in a golden foil, with a white sticker on top of the chocolate and resting in a brown and gold striped paper cup” (Mark). To facilitate visualisation of the Mark, this image was provided:
Did the Mark have distinctive character?
During the examination process, an objection had been raised on the basis that the Mark was not distinctive and would not be perceived as a badge of origin. Ferrero S.P.A. (Ferrero) requested a hearing to pursue the application.
At the hearing, the adjudicator upheld this objection. He characterised the Mark as a “composite mark” combining 3D shapes, aspects of packaging, and colours. In his view, the gold spherical ball shape was the main feature of the Mark, and lacked distinctiveness as the shape and colour appeared to be commonly used for chocolates.
The other features in the Mark also did not contribute to distinctiveness, as the adjudicator found that the brown pleated cup served a functional purpose of preventing the chocolate from rolling, while the white oval sticker was merely decorative.
There were strong policy considerations in this assessment, particularly in relation to the consequences of granting registration to a mark comprising aspects of packaging. The adjudicator expressed concerns that a single proprietor could potentially exploit these strong rights against other traders, especially SMEs, which legitimately use only one or more elements for similar products.
Was there evidence that the Mark had become distinctive through use?
Turning to the issue of whether the Mark had become distinctive as a result of use, the adjudicator emphasised that Ferrero’s evidence must show that the public in Singapore relies on the Mark on its own as an indication of origin. It would not be sufficient if consumers merely associate a shape or aspects of packaging with a business because such non-traditional signs have been consistently used with another famous name or logo.
Based on Ferrero’s evidence of use, the adjudicator was not persuaded that consumers rely only on the Mark as an indication of origin, for the following reasons:
- An overwhelming proportion of the evidence showed the products being sold and marketed under the prominent words “FERRERO ROCHER”.
- The features of the Mark were not discernible in certain promotional materials tendered.
- The features in certain product mock-ups also appeared to vary from how they were described in the application.
- The results of Ferrero’s market survey did not conclusively answer the question of whether Singaporean consumers rely only on the Mark to identify Ferrero’s products.
As such, the evidence fell short in proving that the Mark had acquired distinctiveness, and registration was refused.
Filing 3D shapes with other aspects of packaging would appear to mitigate the risk of objections that often befall signs consisting exclusively of shapes, but there may still be issues of non-distinctiveness.
Unless there is strong evidence that the mark has been used on its own and acquired distinctiveness, a brand owner may have to consider applying for these non-traditional signs in connection with a word mark or logo, or rely on protection under other types of intellectual property rights.