The question of when a trader is entitled to a perpetual monopoly of a shape that has been used in connection with its trade was examined in detail by the Singapore Court of Appeal in its recent magnum opus on shape marks in Société Des Produits Nestlé and another v Petra Foods and another  SGCA 64.
In the case, the first appellant, Nestlé, was the registered owner of trade marks of the two-finger shape mark and the four-finger shape mark of the chocolate Kit-Kat in Singapore. The respondents in this case have also had a long history of selling moulded chocolate wafers and biscuits. The respondents’ new product line consists of two-finger and four-finger “Take-It” products, which like Kit Kat products are also moulded chocolate wafer products. When unwrapped, the resemblance between the two products is clearly evident. It was the appellants’ case that the Take-It products infringed their intellectual property rights.
There were four broad issues that arose in this appeal, namely:
- whether the Registered Shapes lack distinctiveness, either inherent or acquired;
- whether the Registered Shapes consist exclusively of the shape of goods necessary to obtain a technical result;
- whether the Registered Shapes should be revoked for non-use; and
- whether the Registered Shapes should be protected as well-known trade marks.
The Singapore Court of Appeal invalidated the registration of the Registered Shapes on the basis that:
- these shapes are devoid of distinctiveness and have not acquired distinctiveness through use, having thus been registered in breach of Section 7(1)(b) of the Trade Marks Act (Cap. 332, 2005 Rev Ed) (the TMA);
- the registered shapes were registered in breach of the “technical result” prohibition in section 7(3) of the TMA;
- the Registered Shapes would have been liable to be revoked for non-use as there has been no genuine use of the registered shapes as trade marks; and
- the appellants’ claim for well-known trade mark protection fails at the threshold given the Singapore Court of Appeal’s view that marks which are unregistrable under section 7 of the TMA must necessarily be excluded from the special protective regime for well-known trade marks.
Nestlé has also been embroiled in a long drawn-out saga with Cadbury in respect of its application to register chocolate bar shapes in the United Kingdom. In Société des Produits Nestlé v Cadbury UK (No 2)  EWHC 50 (Ch), Justice Arnold held that Nestlé’s four-fingered chocolate bar was not capable of registration in the United Kingdom as it was not inherently distinctive and/or had not acquired distinctiveness through use.
There are six main takeaways that applicants of shape trade marks should note on the back of the rulings in the Singapore and the UK judgments.
a. “Mere association” is insufficient to establish distinctiveness acquired through use
Both judgments contain a similar instructive ruling that “mere association” is insufficient to establish that a shape has acquired distinctiveness through use. It is the “reliance test” (which requires the applicant to show that the trader and consumers of the product regard the shape in question as a badge of origin) that has to be satisfied.
b. Visibility of the shapes at the point of sale
While the Singapore Court of Appeal has held inter alia that the lack of visibility of a shape at the point of sale does not necessarily preclude it from acquiring distinctiveness so as to be registrable as a trade mark, it is noteworthy that both the UK and Singapore judgments considered the fact that Nestlé had distributed its products in opaque wrapping that did not show the shapes at the point of sale, as a factor in determining that the shapes had not acquired distinctiveness through use.
c. Depicting the shapes in the form in which they were registered
Care must be taken to ensure that shape marks must be used in the form in which they were registered. In the Singapore judgment it was noted from the evidence provided that most of the appellants’ marketing material did not depict the registered shapes in the form in which they were registered. For instance, most of the marketing materials depicted the bar with the slogan “Have a break, have a Kit Kat” and in some cases, the bar was angled differently or depicted as broken up. In the circumstances, the Singapore Court of Appeal did not find the evidence adduced by the appellants as sufficient to show any acquired distinctiveness in the registered shapes.
d. Shapes necessary to achieve a “technical result” are not registrable
Where the shape of a product is necessary to achieve a technical result, trade mark protection is unlikely to be available. Applicants could instead consider whether protection under patent law would be appropriate / possible. It was held in the Singapore judgment that the registered shapes were necessary to achieve a technical result, which included inter alia ensuring each broken-off portion was not too small or too large for convenient and satisfactory consumption. The registered shapes were thus caught by the “technical result” prohibition as set out in section 7(3)(b) of the TMA.
e. Revocation for non-use
Trade mark owners should ensure that their registered shape marks are used in the form in which they were registered or risk having them being revoked for non-use. In revoking Nestlé’s registered shapes for not being put to genuine use, the Singapore Court of Appeal notably relied on the fact that the registered shapes were concealed in opaque packaging and were never used on their own even in advertising and promotional materials (as elaborated on in paragraph 9 above).
f. Protection for well-known trade marks
Where a shape mark is unregistrable, it is possible that, like the registered shapes in the Singapore judgment, it will be excluded from the special protective regime for well-known trade marks.
In conclusion, both the Singapore and the UK judgments demonstrate and reflect a restrained and cautious judicial attitude towards the protection of shape marks, where in the Singapore judgment, the registered marks were revoked and in the UK judgment, the mark was deemed not registrable.
Relying on the key takeaways from the two judgments, applicants should therefore carefully examine their intended shape marks to ensure that they are truly a badge of origin and are not necessary to achieve a “technical result” in order to be registrable. Once registered, applicants should exercise special care to ensure that their shape marks are depicted in the form in which they are registered and preferably be visible at the point of sale, so as to not risk being revoked for non-use. In this way, applicants can avoid bitter endings for their registered shape marks and seek sweet beginnings for their intended registered marks.