non-traditional tms in asia tms in asia ella cheong ... malaysia levi strauss & co ... with the...

2013, Ella Cheong (Hong Kong & Beijing)

Non-Traditional TMs in Asia

Ella Cheong


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Types of NTMs


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Types of NTMs


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Types of NTMs


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Summary


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Where NTMs not inherently distinctive

Add word or logo, or Submission of evidence of substantial

use


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Sound

Hong Kong YAHOO! Application No. 300014787 filed on 7 June

2003 Sound mark for Classes 35, 38 and 42 containing lyrics

YAHOO Class 35 e.g. advertising services, directory services Class 38 e.g. electronic communications services Class 42 e.g. computer services

Registered as inherently distinctive mark.


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Trade Dress / Shape (3-D)

Refused for:-1. lack of inherent

distinctiveness despite its shaped & curved planes.

2. Arguments/Evidence for acquired distinctiveness not filed.

Application No.: 300025893 filed on 29 May 2003.

Hearing decision issued on 28 April 2005.


Application No. 300399736 filed on 8 April 2005.

http://www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC300025893R.pdf

Hong KongMcDonald's Corporation (French fries container) 3D mark for Class 29 goods (Food)


Link to the decision:

http://www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC300025893R.pdfhttp://www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC300025893R.pdf


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Shape (3-D) Hong KongPfizer 3D mark for Class 5 goods (pharmaceutical)

Refused for:-1. lack of distinctiveness despite

its colour blue together with elongated diamond-shaped 3-dimensional tablet with round corners.

2. Insufficient evidence to show acquired distinctiveness.

Application no.: 300488908 filed on 2 September 2005.

Hearing decision issued on 28 November 2008.

http://www.ipd.gov.hk/eng/intellectual_property/trademarks/pill_1204.pdf


Application No.: 300517248 filed on 25 October 2005.


http://www.ipd.gov.hk/eng/intellectual_property/trademarks/pill_1204.pdf


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Remember

Different Registries have own views Different Examiners even within same Registry differ


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Sound

Hong Kong McDonald's Corporation Application No. 300241019

filed on 29 June 2004 Sound mark for Class 43

restaurant services being operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption; preparation of carry-out or takeaway foods and drinks.



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Sound Hong Kong

Deutsche Lufthansa Application No. 300781371 filed on 16 December 2006

Sound mark for Classes 35, 39 and 43services

Hearing decision issued on 17 October 2008

Application refused for:-1. Lack of inherent distinctiveness

consumers would simply perceive subject mark as background, entertainment music or as means to draw their attention to services concerned, not badge of trade origin

2. Arguments/Evidence for acquired distinctiveness not filed.

Link to the decision:Link to the decision:




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Positioning Malaysia

Levi Strauss & Co. (Applicant) TM Application no. 95005350 Filed on 8 Jun 1995 Opposition Pending

The mark consists of stitching appliedto external patch pockets of the goods

Class 25: Jeans and Trousers all includedin Class 25


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Shape (3-D) China

Nestl (Appellant) TM owner of Registration no. G640537 as of 27 July

2005 3D shape without "Maggi" / logo (see image )

Kaiping Weishida Seasoning Company Limited (Respondent)

(2010) Guangdong High Court Civil Case No. 418 (in Chinese)

Nestl appealed on decision of non-infringement of its 3D mark

Guangdong High Court upheld that there was no infringement after hearing Nestles appeal as "albeit registered, such 3D mark was relatively weak in termsof distinctiveness" and alleged infringing productscaused no confusion to consumers.

Registered mark

Products claiming non-infringement

Registered mark

Products claiming non-infringement


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Shape (3-D) Singapore

Nestl Trade Mark Application No. T0618780H (Re Societe des Produits Nestle SA[2011] SGIPOS 6)

The IP office of Singapore held: The mark is rejected for lack of inherent

distinctiveness.1. Shape not particularly unusual to be seen as a

guaranteeing sign of trade origin;2. Nor is the yellow bottle cap particularly unusual.

Fails to prove acquired distinctiveness1. Evidence the mark always used in conjunction

with the maggi name and logo2. Public survey leading questions undermines the

results of the survey & cannot show the mark had been used distinctively/consequent reliance on the shape by consumers as TM.

Contrast China case


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Shape (3-D) Thailand

Nestl Supreme Court Judgment No. 2039/2552 (2009)

The Supreme Court held: Bottle design differs very slightly from bottles

used by other proprietors for sauces and other similar goods.

Use of brown colour and configuration for its upper part are functional.

Evidence of acquired distinctiveness failed because it showed only use of bottle design with word Maggi.

Contrast China case


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Evidence of use

Must be significant and over period of generally at least 5 years

Must show use on its own of TM as applied for, without added elements

Survey must not contain leading questions


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Shape (3-D) Hong Kong

Sony Computer Entertainment Inc Application No. 300735066 filed on 6 October 2006 3D mark for Class 9 - Controllers for video games Rejected Appeal to High Court (unsuccessful) Appeal to

Court of Appeal (unsuccessful) Refused for:-

1. Relevant shapes were necessary to obtain a technical result

2. Lack of inherent distinctiveness3. Acquired distinctiveness cannot be proved

evidence submitted shows products bearing other Sony trade marks



Link to Court of Appeal case:

http://legalref.judiciary.gov.hk/lrs/common/search/search_result_detail_frame.jsp?DIS=63541&QS=%2B&TP=JU


Link to High Court case:

http://www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC300735066R.pdfhttp://legalref.judiciary.gov.hk/lrs/common/search/search_result_detail_frame.jsp?DIS=63541&QS=%2B&TP=JUhttp://www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC300735066R.pdf


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Shape (3-D) Singapore

Nestl Trade Mark Application No. T0618780H (Re Societe des Produits Nestle SA[2011] SGIPOS 6)

The IP office of Singapore held: The mark is rejected for lack of inherent

distinctiveness.1. Shape not particularly unusual to be seen as a

guaranteeing sign of trade origin;2. Nor is the yellow bottle cap particularly unusual.

Fails to prove acquired distinctiveness1. Evidence the mark always used in conjunction

with the maggi name and logo2. Public survey leading questions undermines the

results of the survey & cannot show the mark had been used distinctively/consequent reliance on the shape by consumers as TM.

Contrast China case


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Shape (3-D) Thailand

Nestl Supreme Court Judgment No. 2039/2552 (2009)

The Supreme Court held: Bottle design differs very slightly from bottles

used by other proprietors for sauces and other similar goods.

Use of brown colour and configuration for its upper part are functional.

Evidence of acquired distinctiveness failed because it showed only use of bottle design with word Maggi.

Contrast China case


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China

Sub-classes for International Classification

Design classes Audit of name of applicant in Chinese


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Which ?

Trademark Registered Design Copyright


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Shape (3-D) vs Registered Design China Registered TM

Ferrero Application no. G783985 filed on 23 May

2002. Class 30, e.g. candies, cakes, chocolate Registered as inherently distinctive mark.

China Granted Design Patent Ferrero Application no. 01304964.X filed

on 14 September 2000. Class: 05-06, P0012 (Packing

paper) Registered.


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Shape (3-D) vs Registered Design Hong Kong Registered TM

Lego Application no. 302168677 filed on

22 February 2012. Classes 3, 9, 14, 16, 18, 20, 21, 24,

25, 26, 27, 29, 30, 41, 42, 43. Registered as inherently distinctive

mark. Hong Kong Registered Design

Lego Application no. 1102339.3M020 filed on

19 December 2011 Class 21-01: Toy Registered


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Rolex Application no. 300417285 filed on 9

May 2005. Registered as inherently distinctive mark. Advantages:

Give rights in perpetuity upon renewals via TM registration as registered design rights expire after 25-year term.

Hong Kong Registered Design Rolex Application no. 9900882.7 filed on

15 October 1999. Class 10-07: Watch bezel Registered


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Shape (3-D) vs Registered Design Singapore Registered TM

ROLEX SA Application no. T0723105C filed on 6 December 2007. Registered as inherently distinctive mark. Class 14 Watches and chronometric instruments.

Application no. T0723106A filed on 6 December 2007. Registered as inherently distinctive mark. Class 14 Watches and chronometric instruments.

Singapore Registered Design ROLEX SA Reg no. DU2002/1339/A, DU2003/1379/C

D2003/2093/F, DU2005/166/F Class 10-07 Registered


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Shape (3-D) vs Registered Design Malaysia Registered TM

ROLEX SA Application no. 95014009 filed on 29 December 1995. Registered as inherently distinctive mark. Class 14 Watches includes in Class 14.

Application no. 00008546 filed on 30 June 2000. Registered as inherently distinctive mark. Class 14 e.g. Pottery ware including basin, bowl

tray, vat, jug, ceramic pot, kettle, ceramic etc.

Malaysia Registered Design ROLEX SA Application no. 07-00592-0507 filed on 25 April 2007. Class 10-07 Registered


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The Coca-Cola Company Application no. 300817146 filed on 15

February 2007. Registered as inherently distinctive mark.

Class 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Hong Kong Registered Design The Coca-Cola Company Application no. 0702139.3 filed on 24

August 2007. Class 9-01: Bottle Registered


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Shape (3-D) vs Registered Design Singapore Registered TM

The Coca-Cola Company TM no. T0508213A filed on 19 May 2005 Registered as inherent distinctive mark

Class 32Beverages, namely, drinking waters, flavored waters, mineral and aerated waters; and other non-alcoholic beverages, namely, soft drinks, isotonic beverages; fruit drinks and juices; syrups, concentrates and powders for making beverages, namely, flavored waters, mineral and aerated waters, soft drinks, isotonic beverages, fruit drinks and juices.

Singapore Registered Design (15-year term max.) The Coca-Cola Company Design no. D 2005/1304/C filed on 25 July 2005. Class 9-01: Bottle (Aluminum Contour) Registered


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Possible causes of action

Criminal Civil Passing off Unfair competition


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2013 Ella Cheong (Hong Kong) LtdWeb: http://www.ellacheong.com/E-mail: [email protected]

http://www.ellacheong.com/mailto:[email protected]

Non-Traditional Trade Marks in Asia ELLA CHEONG AD = Acquired Distinctiveness required; ID = Inherently Distinctive; IT = In Theory 17 April 2009 Updated 2 July 2013

Country

Trade Dress Sound

Shape (3-D)

Single Colour Combination Colour

Smell Taste Touch Motion Position

(Placement of mark on

goods) Hologram

Per Se w/o Attachment

On Product

On Service

On Pack-aging


On Product

On Service

On Pack-aging

Brunei

(ID) X

(ID)

(ID)

(ID)

(ID)

(ID)

(ID)

(ID)

(ID)

(ID) X X X

IT (if it can be represented by a sign)

X (ID)

Cambodia X X (ID) X X X X X X X X X X X X X X

China X X (ID) X X X X

(AD)

(AD)

(AD) X X X X X X X

Hong Kong (ID)

(ID)

(ID)

(AD)

(AD)

(AD)

(AD)

(AD)

(general

ly ID, but AD

required if

the colours appear on the entire

surface of the

product or a

substantial part

thereof )

(AD)

generally

ID, but AD

required if

the colours appear on the entire

surface of the

packaging or a

substantial part

thereof )

(IT; AD

likely to be required)

(IT; AD


(IT; AD

likely to be requir

ed)

(IT; AD likely to be requir

ed)

(IT; AD


(IT)

2013, Ella Cheong (Hong Kong & Beijing) Page 1 of 4


Country

Trade Dress Sound

Shape (3-D)




goods) Hologram Per Se w/o

Attachment On

Product On

Service On

Pack-aging


On Product

On Service

On Pack-aging

India

(ID)

(AD)

(AD)

* (AD)

* (AD)

* (AD)

* (AD)

(AD)

(AD)

(AD)

(AD)

IT* but

only if it can

be repre-sent-ed

graph-ically as in

a gramoto-

graph

(AD)

IT X

Laos X X (ID) X X X X X X X X X X X X X X

Malaysia

(ID or AD if mark has low

inherent

distinctiveness)

X X (IT) X

(IT) X X

(IT) X

(IT) X X X X

Pakistan (ID)

(IT)

(IT)

(AD)

(AD)

(AD)

(ID)

(ID)

(ID) X X X X

(AD)

X



Country

Trade Dress Sound

Shape (3-D)




goods) Hologram Per Se w/o

Attachment On

Product On

Service On

Pack-aging


On Product

On Service

On Pack-aging

Singapore (ID)

(ID)

(ID)

provided not: (a)

results from the nature of

the goods them-

selves, (b)

neces-sary to

obtain a technical result, or (c) gives substan-tial value

to the goods

(AD)

(AD)

(AD)

(AD)

(AD)

(AD)

(AD)

(AD) X X X

(IT) X

(IT)

Sri Lanka (ID) X

(ID)

(ID)

(ID)

(ID)

(ID)

(ID)

(ID)

(ID)

(ID) X X X X

(ID)

Thailand

(AD based on

experience

, Registrar will ask for

evidence)

X* * (AD) X X X X

(ID)

(ID)

(ID)

(ID) X* X X X X X

Vietnam X X (ID) X X X X X X X X X X X X X X



*India A single colour may be registered as a trade mark if it is unique and peculiar in trade. However, primary and common colours are not registrable. *Thailand It is very difficult to prove acquired distinctiveness for 3D marks. The Supreme Court (highest appeal Court) has upheld the rejection of Nestls

applications for 3D marks for its sauce bottle. The Trademark Act is being amended to include "sound" and "smell / scent" within the definition of marks.


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TRADE MARKS ORDINANCE (Cap. 559) APPLICATION NO.: 300025893 APPLICANT: MCDONALD'S CORPORATION CLASS: 29

MARK: ____________________________________________________________________ STATEMENT OF REASONS FOR DECISION Background 1. On 29 May 2003, McDonalds Corporation (the Applicant) of Illinois,

United States of America applied to register the mark shown in Annex 1 (the subject mark) under the Trade Marks Ordinance (Cap. 559) (the Ordinance).

2. Registration is sought in respect of the following goods in Class 29:

foods prepared from meat, pork, fish and poultry products; meat sandwiches, fish sandwiches; pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables; eggs, cheese, milk, milk preparations, pickles, desserts; potato products; cooked potatoes, potato fritters, French fries, chips, hash browns; nuggets; chicken nuggets; meat nuggets, pork nuggets; prepared meals.

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3. Objections were raised under sections 11(1)(b) and 11(3)(b) of the

Ordinance. 4. The Applicant called for a hearing which took place on 5 January 2005. Mr.

Kim Nicholson of Marks & Clerk appeared on behalf of the Applicant. 5. The following cases were referred to at the hearing:

(a) Philips Electronics NV v Remington Consumer Products Ltd. [2003] R.P.C. 2;

(b) Linde AG v Deutsches Patent-und Markenamt [2003] R.P.C. 45; and (c) British Sugar Plc v James Robertson & Sons Ltd. [1996] R.P.C. 281.

6. I reserved my decision at the end of the hearing. 7. The Applicant did not file any evidence of use of the subject mark. I

therefore have only the prima facie case to consider. The relevant provisions 8. Section 11 of the Ordinance provides that:

(1) Subject to subsection (2), the following shall not be registered --- (a) signs which do not satisfy the requirements of section 3(1) (meaning of

trade mark); (b) trade marks which are devoid of any distinctive character;

(3) A sign shall not be registered as a trade mark in relation to goods if it consists exclusively of ---

(a) (b) the shape of goods that is necessary to obtain a technical result;

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Decision Section 11(1)(b) 9. The subject mark consists of the shape of a container as shown in Annex 1.

Mr Nicholson referred to it at the hearing for convenience as the McDonalds three-dimensional French Fry container.

10. Under section 3 of the Ordinance, the shape of goods or their packaging may

constitute a trade mark, provided, first, that it is capable of being represented graphically and, second, that it is capable of distinguishing the goods or services of one undertaking from those of other undertakings.

11. However, the fact that a category of signs, namely the packaging of goods, is

capable of constituting a trade mark within the meaning of section 3(1) does not mean that the subject mark belonging to that category necessarily has distinctive character for the purpose of section 11(1)(b) in relation to the goods applied for.

12. For a mark to possess distinctive character within the meaning of section

11(1)(b), it must serve to identify the products in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those products from products of other undertakings (Linde, supra, paragraph 40). This means it must have a character which enables it to be distinctive of one traders goods in the sense that it has a meaning denoting the origin of the goods (Philips Electronics v Remington [1999] R.P.C. 809 at 819). It must fulfil the essential function of a trade mark which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. It must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality (Henkel KGaA v Deutsches Patent-und-Markenamt (ECJ) Case C-218/01, paragraph 30).

13. The subject mark consists of the shape of a container without any word,

device or colour. Protection is sought whatever the colour and irrespective of any words and devices on the container, which in real life could appear on

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this sort of container. In order not to be precluded from registration by section 11(1)(b), the shape alone must offer a guarantee that food products covered by the specification offered in a container of that shape have originated under the control of a single undertaking. In other words, the shape and the shape alone must guarantee the identity of the origin of the marked product without any possibility of confusion, and thereby distinguish the product from others which have another origin.

14. A trade marks distinctiveness must be assessed by reference to, first, the

goods or services in respect of which registration is sought and, second, the perception of relevant persons, namely the consumers of the goods or services. That means the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect (Linde, supra, paragraph 41).

15. The criteria for assessing the distinctive character of three-dimensional trade

marks are no different from those to be applied to other categories of trade marks. The provisions of the Ordinance do not require that the shape of the article in respect of which the sign is registered must include some capricious addition such as an embellishment which has no functional purpose. It must simply be capable of distinguishing the product of the proprietor of the trade mark from those of other undertakings and thus fulfil its essential purpose of guaranteeing the origin of the product. (Philips Electronics BV v Remington Consumer Products Ltd, Case C-299/99 [2003] R.P.C. 2, paragraphs 48 to 50).

16. The perception of the average consumer is not necessarily the same in the

case of a three-dimensional trade mark consisting of the packaging of a product, as it is in the case of a word or figurative mark which consists of a sign that is independent from the appearance of the goods it denotes. Average consumers are not in the habit of making assumptions about the origin of goods based on the shape of the packaging, in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctive character in the case of such a three-dimensional trade mark than in the case of a word or figurative mark (Linde, supra, paragraph 48; Henkel KGaA v Deutsches Patent-und-Markenamt (ECJ) Case C-218/01, paragraph 52).

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17. Where the goods in question are ordinary food products as in this case, the

Registrars hearing officers are entitled to rely upon their own experience and perceptions when considering the presumed expectations of an average consumer of the goods in question.

18. The subject mark consists of the shape of a container shown in Annex 1 for

food products covered by the specification referred to in paragraph 2 above. The folds at the side and at the bottom of the container allow the container to be flattened when emptied. The back of the container is taller than the front, allowing easy access by the hand to the food products from the front of the container whilst providing support to the food products from the back. The subject mark therefore comprises a simple and practical shape of a container for holding the food products. The average consumer is likely to perceive the mark as nothing more than a simple container fulfilling the purpose of holding the food products. It does not have a meaning denoting the origin of the goods. The average consumer is unlikely to rely on the shape alone as a guarantee that food products coming in a container of this shape have originated under the control of a single undertaking.

19. The Applicant argues that the objections relating to whether a mark achieves

a technical result can only be raised under section 11(3)(b). 20. Where the shape applied for fulfil certain functions, and its features would

be perceived by the average consumer as functional and not having a meaning denoting origin, this would have a bearing on the assessment under section 11(1)(b).

21. The Applicant submits that the subject mark goes beyond being a simple box

or container as it possesses a number of shaped and curved planes that render the appearance of the container original and distinctive.

22. The curved planes in the subject mark may have been intended to be a

design feature of the container. However, this does not necessarily mean that the shape therefore has distinctive character for the purpose of section 11(1)(b).

23. Having regard to the curved planes and the various features of the subject

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mark described in paragraph 18 above, the overall impression created by the shape in question does not enable consumers to distinguish the product concerned from those having a different trade origin. It would, as a whole, be perceived by the average consumer as an ordinary container for holding the food products.

24. The Applicant submits that the subject mark is sufficiently capable of

distinguishing because when considered as a whole the mark does not directly denote or indicate the prepared food products covered by the application. There is nothing in the mark as a whole which specifically identifies the products covered by the subject application.

25. I agree that the subject mark must be considered as a whole. However in

assessing distinctiveness of a mark, the question is not whether the average consumer, when seeing the subject mark alone, could make out what products would be sold under the subject mark. The relevant question is, when the average consumer sees the subject mark used in relation to the food products applied for, whether that shape as a whole would be perceived as having a meaning denoting the origin of the goods.

26. The more closely the shape for which registration is sought resembles the

shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of section 11(1)(b) (Henkel v OHIM, (ECJ) Joined Cases C-456/01 P and C-457/01 P, paragraph 39). A simple departure from the norm or customs of the sector is not sufficient to render inapplicable the ground for refusal under Section 11(1)(b) of the Ordinance (Henkel KGaA v Deutsches Patent-und-Markenamt (ECJ) Case C-218/01, paragraph 49).

27. In the Registrys letter dated 24 November 2004, the Registry referred the

Applicant to several examples of similar containers. These are now reproduced at Annex 2. The subject mark is very similar to the shapes of the containers at Annex 2. The average consumer would perceive the subject mark as nothing more than an ordinary container.

28. The Applicant submits that if the examples at Annex 2 are not registered,

they have minimal bearing to the subject matter, and it would not be enough for the Registrar to refer to those examples.

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29. Where the relevant goods are ordinary consumer food products, and in the

absence of any evidence of the perception of consumers of these products, the Registrars hearing officers would have to rely upon their own experience and perceptions. The examples at Annex 2 merely reinforces my view that the subject mark would be perceived by the average consumer as nothing more than a container, and merely serves as a means of packaging the food products for sale. The shape does not have a meaning denoting origin.

Other shape marks 30. In its written representations dated 4 January 2005, the Applicant referred to

various shape marks on the Register. I note, however, that Registration No. 300177363 consists of a three-dimensional shape with a device on it. Registration Nos. 300172359 and 300201121 each consists of a three-dimensional shape with a word appearing on it. Registration No. 300257030 consists of a shape which is much more complex and elaborate when compared with the subject mark.

31. The above four accepted marks are different from the subject mark which

consists of a simple shape with no words or device on it. Each case must be considered on its own merits and not by reference to other marks. As stated in British Sugar Plc v James Robertson & Sons Ltd. [1996] R.P.C. 281 at 305, It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark1 and the same must be true under the 1994 Act.

32. The Applicant also referred me to Application No. 200117210 applied for

under the repealed Trade Marks Ordinance (Cap. 43). That application was filed by the Applicant for registration of a container having the same shape as the subject mark but with the colours red and yellow and also what is called the Applicants Golden Arches Logo on it. That mark, with the colour and logo elements, is as a whole different from the subject mark. Application for registration of that mark was, in any event, withdrawn.

1 [1966] R.P.C. 541

- 8 -

That application does not assist the Applicant in this case. 33. For the above reasons I find that the mark is devoid of any distinctive

character within the meaning of section 11(1)(b) of the Ordinance. Section 11(3)(b) 34. As I have found that the subject mark is devoid of any distinctive character,

registration of the subject mark must be refused. It is therefore unnecessary for me to consider the objection under section 11(3)(b).

Conclusion 35. Having considered all the documents filed by the Applicant and all the

arguments submitted in relation to this application, I find that the subject mark as a whole is devoid of any distinctive character, and is precluded from registration by section 11(1)(b) of the Ordinance. Accordingly, I refuse the application under section 42(4)(b) of the Ordinance.

Finnie Quek for Registrar of Trade Marks 28 April 2005

- 1 -

Annex 1

- 1 -

Annex 2

Examples of containers referred to in Registrys letter dated 24 November 2004: http://www.wendys.com/food/images/nutrition/product/21.jpg :

http://www.cinnabon.com/images/prod_3.jpg :

http://www.bk.com/Food/products/fries.aspx :

http://www.hardees.com/images/upload/homepage/bnr_intermenu.jpg :

http://www.lotteria.co.jp/html/images/p_variety11.jpg :

http://www.sonicdrivein.com/images/menu_catFavesAndCraves.jpg :

http://www.whataburger.com/images/menu/mainlinks.jpg :

1

TRADE MARKS ORDINANCE (CAP. 559) APPLICATION NO. : 300781371

MARK :

APPLICANT : DEUTSCHE LUFTHANSA AG CLASSES : 35, 39 and 43

STATEMENT OF REASONS FOR DECISION Background 1. On 16 December 2006, Deutsche Lufthansa AG (applicant) applied,

pursuant to the Trade Marks Ordinance (Cap. 559) (Ordinance), to register the following mark that consists of a sound (subject mark):

2. Registration of the subject mark is sought in respect of the following services

in classes 35, 39 and 43: Class 35

Arranging and monitoring of programs related to customer loyalty, sale, bonuses and sales promotion; advertising; procurement of newspaper subscriptions; advertising by means of a customer loyalty program for the use of airplanes, hotels, rental cars and credit cards. Class 39 Transportation, transport of passengers and goods by automobiles, trains, ships and airplanes; transportation and storage of goods, courier services; storage of goods, transportation of money and valuables, transport of ill persons; rescuing of persons; mail-order delivery services, namely

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purchase-order acceptance and shipments of goods; packing and shipment of goods; services of an airline company, travel bookings, arranging and organization of travels, organization of transportation services, rental of airplanes and automobiles, reservation of rental cars, organization of city tours, procurement of tourist guides. Class 43 Providing of food and drink for guests, and temporary accommodation of guests; hotel reservation.

3. At the examination stage, objection was raised under section 11(1)(b) of the Ordinance on the ground that the subject mark is devoid of any distinctive character.

4. A hearing on the registrability of the subject mark took place before me on 12

August 2008. Mr. Thomas Tsang of Messrs. Wilkinson & Grist appeared on behalf of the applicant.

5. The applicant did not file evidence of use of the subject mark. I therefore

have only the prima facie case to consider. I reserved my decision at the end of the hearing.

The Ordinance 6. Section 11 of the Ordinance sets out the absolute grounds for refusal of an

application for registration and the relevant provisions are: (1) Subject to subsection (2), the following shall not be registered (a) ; (b) trade marks which are devoid of any distinctive character; (c) (d) Decision Section 11(1)(b) of the Ordinance 7. Section 11(1)(b) of the Ordinance (section 11(1)(b)) precludes from

3

registration marks which are devoid of any distinctive character. In British Sugar Plc v. James Robertson & Sons Ltd [1996] R.P.C. 281 at 306, Jacob J (as he then was) stated as follows:

What does devoid of any distinctive character mean? I think the phrase requires

consideration of the mark on its own, assuming no use. Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark?

8. The test of distinctiveness was further discussed in Nestle SAs Trade Mark

Application (Have a Break) [2004] F.S.R. 2, at paragraph 23: The distinctiveness to be considered is that which identifies a product as originating

from a particular undertaking. Such distinctiveness is to be considered by reference to goods of the class for which registration is sought and consumers of those goods. In relation to the consumers of those goods the court is required to consider the presumed expectations of reasonably well informed, and circumspect consumers.

9. Applying the above legal principles, to determine the distinctiveness of the subject mark under section 11(1)(b), the relevant issue in question is whether the subject mark, assuming no use, is capable of distinguishing the applied for services as originating from one particular undertaking from those of others. The distinctiveness of the subject mark is not assessed in a vacuum but must be assessed by reference to the services sought for registration and the perception of the average consumers for those services, who are presumed to be reasonably well informed, circumspect and observant.

10. I further remind myself that section 11(1)(b) does not draw a distinction

between different types of trade marks, and the criteria for assessing the distinctive character of a sign which consists of a sound do not differ from those applicable to other types of marks. The registrability of the subject mark must, like words, figurative or other types of marks, depend on whether the sound forming the subject mark serves to identify the trade source of the services in respect of which it is to be used.

11. It has been held, however, by the Court of Justice of the European

Communities (ECJ) that the relevant consumers perception is not necessarily the same in respect of different categories of marks. Average consumers are not in the habit of making assumptions about the trade origin of some categories of marks, to the extent it may be more difficult to establish

4

distinctiveness in relation to those categories of marks than for others. For instance, the perception of the relevant public of a word or figurative mark may be different from that of a mark comprising a three-dimensional shape of product (Develey Holding GmbH & Co Beteiligungs KG v. OHIM [2008] E.T.M.R. 20, at paragraph 80), a three-dimensional shape of packaging of goods (Deutsche SiSi-Werke GmbH & Co Betriebs KG v. OHIM [2006] E.T.M.R. 41 at paragraph 28), a colour (Libertel Groep BV v. Benelux-Merkenbureau [2004] F.S.R. 4 at paragraph 65), an advertising slogan (OHIM v. Erpo Mbelwerk GmbH (The Principle of Comfort) [2005] E.T.M.R. 58 at paragraph 34) or a design applied to the surface of goods (Glaverbel v. OHIM [2005] E.T.M.R. 70 at paragraphs 22-23).

12. Similarly, the average consumers are not accustomed to making assumptions

as to the origin of the applied for services on the basis of a mark that consists of a sound such as the subject mark. I find the above ECJs comments on the public perceptions are also applicable in assessing the distinctive character of the subject mark.

13. The subject mark consists of a sound represented graphically by musical

notation set out in paragraph 1 above in the key of F major which is a made up of musical notes, namely, f, e, f and 2 c notes, forming a short tune.

14. The services sought for registration encompass a broad range, such as,

arranging and monitoring of programs related to customer loyalty; advertising in class 35, transportation; services of an airline company; travel bookings in class 39 and providing of food or drinks for guest; temporary accommodation in class 43. The applied for services are essentially advertising, transport and providing of food and drink. The average, relevant consumers are members of the general public who seek for these services.

15. Short pieces of music or tune consisting of a few notes similar to the subject

mark have often been used in connection with advertising and promotion of the applied for services or in the course of providing the applied for services. Assuming normal and fair use of the subject mark in relation to the applied for services, it is likely to be used on board of the applicants aircrafts, in relation to customers on hold with hotline operators or at any customers contact point, and in advertising and promotion of the applied for services that may be launched via broadcasting on radio and television, at promotion booths in shopping centres, on the street, or on websites. In my view, the average,

5

relevant consumers will simply perceive such music or sound as background, entertainment music or part of the audio effects in commercials or jingles to appeal to consumers or to add incitement to purchase the services in question.

16. Considering the subject mark, I find it to be a short tune formed by a few

notes that lasts for a few seconds. When the subject mark is used in the course of the provision, advertising and promotion of various classes of services applied for, the relevant consumers would, on first impression, regard such sound as background, entertainment music or as a means to attract consumers attention to the provision, advertisement or promotion of the applied for services rather than to denote trade origin. The average consumers are not very attentive in the sense that if a sign does not instantly indicate to them the origin of the goods or services but merely gives them purely promotional or abstract information, they will not take the time to enquire into the signs various possible functions or mentally register the sign as a trade mark (Sykes Enterprises, Inc. v. OHIM (REAL PEOPLE, REAL SOLUTIONS) [2003] E.T.M.R. 57). To my mind, the average consumers are generally used to hearing similar sort of sound in the course of the provision, advertising and promotion of the applied for services and would not necessarily perceive the subject mark as an indication of commercial origin without first being educated that the specific sound is a trade mark.

17. Mr. Tsang submitted that the subject mark had satisfied both criteria for

registration of a sound mark, namely, a sign which was capable of being represented graphically and which distinguished the services sought for registration without any risk of confusion (Shield Mark BV v Kist [2004] Ch. 97). Mr. Tsang disagreed with the Registrars view that the subject mark had an acoustic impression of a rising sequence of 4 tones and there was nothing unusual or uncommon in the tune. According to Mr. Tsang, the subject mark was not derived from either one or two note(s) or a lengthy piece of musical notation (such as a complete song) which was generally regarded as difficult to be perceived as a trade mark and stated that a sound mark derived from a short piece of simple musical composition tended to have better qualification as a registrable trademark as illustrated by the following sound marks on the register, namely 300430677AB, 300663750 and 300241019. Mr. Tsang emphasized that those marks have at least two features in common with the subject mark in that each of them was composed of a few musical notes with tied notes which carried a simple but catchy tune or acoustic impression; and were registered in respect of services. Mr. Tsang contended that the subject

6

mark ought to be examined on par with these registered marks precedents. 18. While the requirement of graphical representation of the subject mark is met

for it is capable of represented graphically as shown in paragraph 1 above, I do not concur with the above remaining submissions of Mr. Tsang. In the first place, distinctiveness of a mark is not determined by the number of notes, the length of the tune or the impression generated by a piece of music. The crux of the test in assessing distinctive character under section 11(1)(b) is whether the relevant consumers will perceive the subject mark first and foremost as an identifier of the services applied for as originating from a particular undertaking. As mentioned in paragraph 16, upon hearing the subject mark in the context of the applied for services, the relevant consumers would not naturally think that the sound comprising the subject mark is an indicator of trade origin. I am not persuaded that the subject mark has anything unusual or uncommon such that the relevant consumers would rely on it alone as a badge of origin. With regard to the three sound marks as referred to by Mr. Tsang, as a general rule, each case must be considered on its own merits and comparison with other marks is not of assistance to the applicant (British Sugar Plc v James Robertson & Sons Ltd (supra) at 305). As there are valid reasons for refusal, I should not accept the registration of the subject mark merely on the basis of these earlier registrations in Hong Kong.

19. Mr. Tsang claimed that due to the unique nature of a sound mark, namely it

cannot be perceived visually, every sound mark in reality inevitably conveyed such impression to the consumers as background music for advertising or promotion, particularly when the mark is applied for or used in the course of provision of services. Mr. Tsang contended that the Registrars view on the subject mark was not real because its tune was not lengthy or apt enough to serve as a piece of decent background music for advertisement or promotion.

20. I must point out that it is in principle possible for a trade mark to serve dual

purposes as a badge of origin as well as a promotional formula or slogan (Best Buy Concepts Inc. v. OHIM [2004] E.T.M.R. 19). That said, the crucial question is whether the subject mark indeed performs the function of an indicator of trade source, i.e. whether the subject mark which consists of a sound would be perceived immediately as an indication of the commercial origin of the services in question, so as to enable the relevant consumers to distinguish, without any possibility of confusion, the applied for services from

7

those of a different commercial origin. 21. Mr. Tsang asserted that the subject mark did not have a straightforward or

typical tune that was widely known or used in relation to the applicants applied for services. Mr. Tsang claimed that there was no evidence or suggestion before the Registrar that subject mark was known to be identical or confusingly similar to any other sound mark (i) in which another trader had prior rights; (ii) which had been commonly used in relation to the applied for services; and (iii) which had been widely known to be related to or associated with the kind, quality, function or other characteristics of such services. Mr. Tsang added that there was no indication that registration of the subject mark would unfairly prejudice or embarrass other traders in the same industry of the applied for services.

22. This submission does not assist the applicant, either. The fact that a sign or a

mark is not widely or commonly known or used by traders in the same industry of the applied for services does not necessarily mean that it possesses any distinctive character. Nor the proposition that the subject mark is not identical or confusingly similar to any other sound mark a decisive factor. Given that it is prevalent for a sound or music of a sort similar to the subject mark to be heard in the course of the provision, advertising and promotion of the applied for services, the relevant consumers would simply perceive the subject mark as background, entertainment music or as a means to draw their attention to the services concerned. The perceptions that would trigger in the mind of the relevant consumer of the applied for services is that the subject mark is origin neutral instead of origin specific (Geoffrey Hobbs Q.C., the Appointed Person in Cycling IS [2002] R.P.C. 37 at paragraph 74). Unless and until the relevant consumers are educated that the subject mark is intended to be a trade mark, I consider that it is unlikely that the relevant consumers will perceive the subject mark as denoting trade source. The subject mark fails to perform the essential function of a trade mark by enabling the relevant consumers, on hearing the sound of the subject mark, to distinguish the applied for services from those of other traders.

23. On the above basis, the subject mark is devoid of any distinctive character and

is debarred from registration under section 11(1)(b).

8

Reference to overseas registrations 24. Mr. Tsang drew my attention to the fact that the subject mark had been

accepted for registration for the same services applied for in Germany, the USA, and in the European Community as Community Trade Mark (CTM). Mr. Tsang stated that whilst he fully understood that the Registrar was not bound to follow these overseas registrations as trade marks law was territorial, such registrations, (in particular those registrations that were in English speaking countries, and since CTM registrations have effect in the UK) ought not be lightly disregarded when examining the subject application because they at least illustrated that the subject mark had been recognized as inherently distinctive in the UK and the international community.

25. I have considered those overseas registrations. However, national trade mark

rights are territorially limited and granted independently of each other. The bare fact of registrations in other jurisdictions is not sufficient to establish that a sign is eligible for registration here (Automotive Network Exchange Trade Mark [1998] RPC 885). I must examine the registrability of the subject mark against the requirements under the Ordinance and the legal principles established in case law, instead of relying on the mere fact of overseas acceptances. As I have found valid reasons for rejecting the subject application for registration, I should not simply follow the decisions of other registries, particularly since the reasons and rationale behind these acceptances are not available before me. Those overseas registrations do not assist the applicant in overcoming the objection.

Conclusion 26. In this decision, I have carefully considered all the oral and written

submissions filed by or on behalf of the applicant in respect of the subject application. Based on the reasons stated above, I find that the subject mark is precluded from registration under section 11(1)(b) of the Ordinance and the subject application is accordingly refused under section 42(4)(b) of the Ordinance.

Vivien LUK For Registrar of Trade Marks 17 October 2008

(2010)418 Laurent Venetz 8 ,2008123 199619831984198419851990 19921119968MasterMaster20083530Master 193619957272002314200211272005727G64053730 20057272015727

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2008721 20081023 20081151030 200811241G640537 2 G640537 19831886Julius Maggi2005727

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MasterMaster200835 MasterMaster Master G640537 1000 12G6405371 G640537G640537G640537 G6405372G640537G640537G640537G640537G640537G640537G640537G640537()G640537

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G640537G640537G640537G640537 12 2010719640537[201015921] 12010224536G64053721988131997923G640537 1362 2010719640537640537 1988119979 1G6405372G640537 G640537G640537

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G640537 G640537 G640537() MasterMasterMasterMaster 1983 1000

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0000463305 ICP ICP08017635-2

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AM AT BA BG BX BY CN CU CZ DE DZ EG ES FR HR HU IT JP KG KP

KZ LI MA MC MD ME MK MN PL PT RO RS RU SD SG SI SK TJ UA UZ

VN YU

640537 - Countries : All | Granted | Refusal | Final decision | No longer designated

151 Date of the registration27.07.1995

180 Expected expiration date of the registration/renewal27.07.2015

270 Language of the applicationFrench

732 Name and address of the holder of the registrationSocit des Produits Nestl S.A. CH-1800 Vevey (CH)

811 Contracting State of which the holder is a nationalCH

740 Name and address of the representativeNestec S.A. Avenue Nestl 55 CH-1800 Vevey (CH)

540 Mark

550 Indication relating to the nature or kind of markThree-dimensional mark

531 International Classification of the Figurative Elements of Marks (Vienna Classification) - VCL(3) 19.07.02 ; 29.01.02 ; 29.01.07

591 Information concerning colors claimedBrown and yellow. brun et jaune. Marrn y amarillo.

511 International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) - NCL(6)

30 Flavours for nutritional purposes.

Printed : 10/07/2013

Current Status

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2013-7-10http://www.wipo.int/romarin/detail.do?ID=0

Administrator

822 Basic registrationCH, 09.02.1995, 417 932

300 Data relating to priority under the Paris Convention and other data relating to registration of the mark in the country of origin

CH, 09.02.1995, 417 932

831 Designation(s) under the Madrid AgreementDZ

832 Designation(s) under the Madrid ProtocolSG - UZ

834 Designation(s) under the Madrid Protocol by virtue of Article 9sexiesAM - AT - BA - BG - BX - BY - CN - CU - CZ - DE - EG - ES - FR - HR - HU - IT - KG - KP - KZ - LI - MA - MC - MD - ME - MK - MN - PL - PT - RO - RS - RU - SD - SI - SK - TJ - UA - VN

527 Indications regarding use requirementsSG

Registration : 1995/8 LMi, 18.10.1995, AM, AT, BA, BG, BX, BY, CN, CU, CZ, DE, DZ, EG, ES, FR, HR, HU, IT, KG, KP, KZ, LI, MA, MC, MD, MK, MN, PL, PT, RO, RU, SD, SI, SK, TJ, UA, UZ, VN, YU

Total provisional refusal of protection : 1996/1 Gaz, 12.06.1996, DE

Total provisional refusal of protection : 1996/4 Gaz, 19.07.1996, CN

Final decision confirming the refusal of protection : 2003/7 Gaz, 15.05.2003, CN

Total provisional refusal of protection : 1996/5 Gaz, 02.08.1996, ES


Final decision confirming the refusal of protection : 2003/7 Gaz, 15.05.2003, CN

Total provisional refusal of protection : 1996/11 Gaz, 25.10.1996, EG

Total provisional refusal of protection : 1996/12 Gaz, 07.11.1996, AT

Final decision confirming the refusal of protection : 1997/15 Gaz, 11.09.1997, ES

Statement indicating that the mark is protected for all the goods and services requested : 1998/2 Gaz, 12.03.1998, EG

Statement indicating that the mark is protected for all the goods and services requested : 1999/9 Gaz, 10.06.1999, AT

Final decision confirming the refusal of protection : 2000/17 Gaz, 28.09.2000, DE

Renunciation : 2002/5 Gaz, 18.04.2002, CN

Subsequent designation : 2002/6 Gaz, 02.05.2002, CN


2/3Simple search


Designated contracting party(ies) for which the second installment has been paid (Rule 40(3)) : 2005/40 Gaz, 10.11.2005

Subsequent designation : 2006/34 Gaz, 28.09.2006, JP, SG

Total provisional refusal of protection : 2006/39 Gaz, 02.11.2006, SG

Continuation of effect : 2007/23 Gaz, 12.07.2007, ME

Total provisional refusal of protection : 2007/24 Gaz, 19.07.2007, JP

Renunciation : 2007/37 Gaz, 18.10.2007, JP

Opposition possible after the 18 months time limit : 2008/6 Gaz, 13.03.2008, SG

Statement indicating that the mark is protected for all the goods and services requested : 2008/50 Gaz, 15.01.2009, CN

Confirmation of total provisional refusal under Rule 18ter(3) : 2011/43 Gaz, 17.11.2011, SG

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7/16/13 LawNet Legal Research

www.lawnet.com.sg/lrweb/tools.do?subaction=lrLp2ToolsShowPrint&docid=F:/LP2_Data/HTML/cases/dcss/[2011]_SGIPOS_6.html@htmlcoll_lp2data_2&in 1/8

Re Societe des Produits Nestle SA[2011] SGIPOS 6

Case Number : Trade Mark Application No. T0618780H

Decis ion Date : 15 Jun 2011

Tribunal : Intellectual Property Office of Singapore

Coram : Tan Mei Lin

Counse l Names : Gooi Chi Duan for the applicants

Cur Adv Vult

Grounds of Decision

1 On 3 May 2006, Societe des Produits Nestle S.A. ("the Applicants") on the basis ofInternational Registration 640537 requested protection in Singapore under the provisions of theMadrid Protocol, the trade mark ("the Application Mark") shown below:

[Law Net Admin Note: Image 1 is view able only to Law Net subscribers via the PDF in the CaseView Tools.]

2 The trade mark consists of a three-dimensional shape of a bottle for packaging liquidseasoning. The goods for which protection is sought are "flavours for nutritional purposes" in Class 30.

3 The application met with the objection that the Application Mark is devoid of any distinctivecharacter under section 7(1)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) ("the Act").

Applicants Evidence

4 In an attempt to overcome the objection, the Applicants submitted evidence in the form of astatutory declaration by Amy Ng Sing Fuay ("Ms Ng"). Ms Ng is the Regional Intellectual PropertyAdvisor of Nestle Products Sdn Bhd. Exhibited to Ms Ng's statutory declaration was a document titled"Maggi Bottle Trademark Survey Final Report" (the "Survey Evidence Report"). The Survey EvidenceReport provides the results of a public survey undertaken in 2008 to test the Singapore public'srecognition of the Application Mark. The evidence is primarily intended to support the case that theApplication Mark had acquired distinctive character through use prior to the date of the application. Iwill return to this evidence in more detail later. At this stage it is sufficient to set out the primary facts.

5 The Examiner, held that the evidence of use adduced by the Applicants, did not sufficientlyestablish that the Application Mark had acquired distinctive character. In coming to her decision, theExaminer felt that neither the survey evidence nor the printed publicity material adduced establishedthat the 3D bottle device was capable, on its own, of distinguishing the Applicant's goods from thoseof other traders.

6 The matter came to be heard on 7 March 2011 following a request for an ex parte hearing bythe Applicants. The Examiner's decision was maintained and a decision letter (without grounds) wassent to the Applicants on 10 March 2011. The Applicants requested the grounds of the decision on 15April 2011.

Applicable Law Section 7(1)(b)

7 The relevant parts of section 7(1)(b) of the Act are as follows:

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"7(1) the following shall not be registered-

(a) --

(b) trade marks which are devoid of any distinctive character;

(c) --

(d) -- "

8 Section 7(1)(b) is identical to Article 3(1)(b) of the European Directive 104/89 (the "Directive")and the following guiding principles have been laid down in cases decided thereunder:

a. an objection under Section 7(1)(b) operates independently of objections under Section 7(1)(c) Linde AG (and others) v Deutsches Patent-und Markenam t Joined Cases C-53/01 to C-55/01,paragraphs 67 to 68;

b. for a mark to possess a distinctive character it must identify the product or service in respect ofwhich registration is applied for as originating from a particular undertaking and thus to distinguishthat product or service from the products or services of other undertakings Linde paragraphs 40-41 and 47;

c. a mark may be devoid of distinctive character in relation to goods or services for reasons otherthan the fact that it may be descriptive Postkantoor paragraph 86;

d. a trade marks distinctiveness is not to be considered in the abstract but rather by reference to thegoods or services in respect of which registration is sought and by reference to the relevant publicsperception of that mark Libertel Group BV v Benelux Merkenbureau Case C-104/01paragraphs 72-77;

e. the relevant public must be deemed to be composed of the average consumer who is reasonablywell-informed and reasonably observant and circumspect Libertel paragraph 46 referring to LloydSchuhfabrik Meyer Case C-342/97.

Section 7(1)(b)

9 The principles enunciated in the above cases apply in assessing the distinctive character of anytype of mark, including three-dimensional trade marks. In the context of three-dimensional marks, thetest to be applied is whether the average consumer would, when encountering the goods sold in theshape put forward for registration, see the shape as a sign that, by itself, guarantees to them thetrade origin of the goods.

10 I find that the average consumer of the goods would be the general public at large.

11 Having decided to whom the analysis is made, I next consider the impact that the sign willhave when taking into account notional and fair use of the mark. Whilst the test for distinctiveness isthe same for shape marks as for any other mark, non-traditional marks may be less readily acceptedby the average consumer as indications of trade origin.

12 In Henkel KGaA v Deutsches Patent und Markenam t C-218-01, the European Court ofJustice ("ECJ") laid down a test to be applied under Article 3(1)(b) of the Directive in a scenarioinvolving a three-dimensional trade mark consisting of the shape of packaging for goods. The ECJstated:

"For three-dimensional trade marks consisting of the packaging of goods which are packaged in tradefor reasons linked to the very nature of their product, their distinctive character within the meaning



of Article 3(1)(b) of Directive 189/04 must be assessed by reference to the perception of the averageconsumer of such goods, who is reasonably well informed and reasonably observant andcircumspect. Such a trade mark must enable such a consumer to distinguish the product concernedfrom those of other undertakings without conducting an analytical or comparative examination andwithout paying particular attention."

13 The ECJ, in Henkel KGaA v OHIM C-456/01P and C-456/01P, made certain observations onpossible differences between consumers perception of three-dimensional and two-dimensional marks:

"The Court of First Instance was also correct in stating that the criteria for assessing the distinctivecharacter of three-dimensional shape-of-products marks are no different from those applicable toother categories of trade mark. It none the less observed that, for the purpose of applying thosecriteria, the relevant public's perception is not necessarily the same in relation to a three-dimensionalmark consisting of the shape and colours of the product itself as it is in relation to a word orfigurative mark consisting of a sign which is independent from the appearance of the products itdenotes. Average consumers are not in the habit of making assumptions about the origin of productson the basis of their shape or the shape of their packaging in the absence of any graphic or wordelement and it could therefore prove more difficult to establish distinctiveness in relation to such athree-dimensional mark than in relation to a word or figurative mark (see, to that effect, Linde,paragraph 48, and Case C- 218/01 Henkel [2004] ECR I-0000, paragraph 52)."

14 In P rocter and Gam ble v OHIM, Joined Cases, 468-01/482/01, the ECJ said at paragraph 37:

"In those circumstances, the more closely the shape for which registration is sought resemblesthe shape most likely to be taken by the product in question, the greater the likelihood of theshape being devoid of any distinctive character for the purposes of Article 7(1)(b) of RegulationNo 40/94. Only a trade mark which departs significantly from the norm or customs of the sectorand thereby fulfils its essential function of indicating origin, is not devoid of any distinctivecharacter for the purposes of that provision (see, in relation to the identical provision in Article3(1)(b) of First Directive 89/104, Henkel, paragraph 49)."

15 Whilst there is no specific material on the official file to demonstrate what the norms orcustoms are in this particular field, I am aware, from my own general consumer knowledge, that goodsof the type sold under the sign are sold in various shapes of container ranging from the most basicand plain type to those that have more detail and design. Those with more detail or design do notnecessarily function as guarantees of origin, they may simply be designed in that way to give theproduct a more attractive feel. Some containers may also have a design element that succeeds inimparting some form of functional purpose such as assisting with grip. In short, there is no single normor custom for containers in this particular field.

16 The case law instructs me that to function as a guarantee of origin the mark must departsignificantly from the norm or customs. The fact that various shapes are used as containers in therelevant field means that a prima facie registrable shape mark must at least be relatively unusual inorder for it to stand out from the crowd and be seen by the average consumer as more than justanother shape that has been placed on the market for the goods in question.

17 Turning to the sign in question, I do not consider that it will not be seen as anything otherthan just another shape. It does not strike me as being particularly unusual so that the consumer,when they encounter it in use, will see it as a guaranteeing sign of trade origin. It has a basic overallconfiguration of a bottle with a lid or cap. The applicant submits that the sign in question has anunusual shape by virtue of its narrow round neck and a much larger square body. Further, theapplicant highlights the bottle cap, which is yellow and has a sharp tip. These aspects do not strikeme as being particularly unusual.

18 An internet search reveals that that competing products are also available in shapes that



possess such an appearance, often being used to imbue the bottle with a more attractive feel.

19 I therefore, find that the mark fails the prima facie test for registration.

P recedents from Singapore

20 The Applicants have referred me to several shape marks which have been accepted forregistration in Singapore. The Applicants submit that each and every proprietor should be given fairand equal treatment with regards to their respective trade mark applications. Nevertheless, theApplicants in their submissions acknowledge that each application is to be considered on its ownmerits.

21 I do not find the precedents persuasive for reasons set out subsequently.

22 Six out of the eight registrations cited in the Applicants' written submissions are registered astwo-dimensional marks and not three dimensional marks. Following the reasoning of the ECJ, quotedin paragraph 10 above, since the relevant public's perception may not necessarily be the same inrelation to a three-dimensional mark consisting of the shape and colours of the product itself as it is inrelation to a word or figurative mark consisting of a sign which is independent from the appearance ofthe products it denotes, I do not regard these two-dimensional precedents of relevance to theApplicants' case.

23 The registration T0628934A in Class 3 has been accepted on the basis of acquireddistinctiveness. As a finding of acquired distinctiveness is fact dependant, and the facts surroundingacceptance of T0628934A are not before me, the precedent is not relevant in respect of theApplication Mark.

24 As for T0718102A, I find that by virtue of the red sombrero, being an embellishment whichdoes not serve a functional purpose and is not commonly used in the industry, the mark is registrableon its own merits.

25 I therefore find these prior registrations of little assistance in determining the outcome of thisapplication.

26 Further, it is trite law that in considering an application for registration, comparison with othermarks on the register is irrelevant. I draw support for this from the judgment of Jacob J in BritishSugar [1996] R.P.C. 281 at 305 where he stated:

"Both sides invited me to have regard to the state of the register. Some traders have registeredmarks consisting of or incorporating the word Treat. I do not think this assists the factual enquiryone way or the other, save perhaps to confirm that this is the sort of word in which traders wouldlike a monopoly. In particular the state of the register does not tell you what is actually happeningout in the market and in any event one has no idea what the circumstances were which led theregistrar to put the marks concerned on the register. It has long been held under the old Act thatcomparison with other marks on the register is in principle irrelevant when considering a particularmark tendered for registration, see e.g. MADAME Trade Mark and the same must be true under the1994 Act. I disregard the state of the register evidence.

P recedents from other jurisdictions

27 The Applicants have further highlighted that the Application Mark has been registered innumerous other jurisdictions. I do not find this useful or relevant as these jurisdictions would likelyhave different laws and practices. As for the Hong Kong precedent, I note that the Application Markwas not accepted prima facie there, but rather on the basis of acquired distinctiveness and surveyevidence. This precedent thus does not support the Applicants' contention that the Application Mark



has inherent distinctiveness. As such, I do not see how any of the precedents assist the Applicants'case or how I can really place any weight on these acceptances when deciding issues relating to anapplication in Singapore.

The case for registration based on acquired distinctiveness

The Law

28 Section 7(2) of the Act permits acceptance of a mark that is otherwise unacceptable under theprovisions of Section 7(1)(b) if it has in fact acquired a distinctive character because of the use made ofit. Section 7(2) of the Act provides as follows:

7.-(2) A trade mark shall not be refused registration by virtue of subsection (1) (b), (c) or (d)above if, before the date of application for registration, it has in fact acquired a distinctivecharacter as a result of the use made of it.

29 The question to be determined here is whether, through the use made of it, the sign appliedfor has acquired a distinctive character in respect of the goods.

30 It is well established that this question must be asked through the eyes of the averageconsumer who is reasonably well informed and reasonably observant and circumspect (LloydSchuhfabrik Meyer & Co. Gm bH v . Klijsen Handel BV Case C-342/97 [1999] ECR I-3830 paragraph26).

31 In W indsurfing Chiem see v Boots (1999) ETMR 585, the ECJ set out the test to be applied inorder to determine whether a trade mark has acquired distinctive character under Article 3(3) of theDirective (similar to section 7(2) of the Act). The ECJ held that the national courts may recogniseevidence from a variety of sources. The ECJ held:

"In determining whether a mark has acquired distinctive character following the use made of it, thecompetent authority must make an overall assessment of the evidence that the mark has come toidentify the product concerned as originating from a particular undertaking, and thus to distinguishthat product from goods of other undertakings." (Para 49)

.

"In assessing the distinctive character of a mark in respect of which registration has been applied for,the following may also be taken into account: the market share held by the mark; how intensive,geographically widespread and long- standing use of the mark has been; the amount invested by theundertaking in promoting the mark; the proportion of the relevant class of persons who, because ofthe mark, identify goods as originating from a particular undertaking; and statements from chambersof commerce and industry or other trade and professional associations." (Para 51)

..

"If, on the basis of those factors, the competent authority finds that the relevant class of persons, orat least a significant proportion thereof, identify the goods as originating from a particularundertaking because of the trade mark, it must hold that the requirement for registering the marklaid down in Article 3(3) of the Directive is satisfied. However, the circumstances in which thatrequirement may be regarded as satisfied cannot be shown to exit solely by reference to generalabstract data such as predetermined percentages." (Para 52)

32 It is also well established that use does not necessarily equate with distinctiveness. As MorrittL.J. put it in Bach Flow er Rem edies Ltd v Healing Herbs Ltd [2000] RPC 513:

".....use of a mark does not prove that the mark is distinctive. Increased use, of itself, does not do so



either. The use and increased use must be in a distinctive sense to have materiality.

33 Further guidance on the test to be applied can be gleaned from the ECJ in the Philips vRem ington Case C-299/99 where the Court decided that a finding of acquired distinctiveness couldonly be made where reliable evidence shows that recognition of the mark as indicating the goods orservices of one undertaking is as a result of its use as a trade mark. The ECJ, in Societe des produitsNestle SA v Mars UK Ltd Case C-353/03, at paragraph 29, indicated that this later point means useof the mark for the purposes of the identification, by the relevant class of persons, of the product orservices as originating from a given undertaking.

34 Applying the case law to the case at hand, it seems to me that the evidence must show thatthe sign is taken by the average consumer as a guarantee that the goods originate from a particularundertaking because of the use of the sign for that purpose.

35 Has the mark been used in a manner which has permitted it to fulfil the essential function of atrade mark (which is to guarantee that all the goods offered for sale under it are the responsibility ofone undertaking responsible for their quality)? In trade, it is often the case that more than one trademark is used by a trader to guarantee the trade origin of the goods to the consumer. These arecommonly referred to as secondary trade marks. It is fair to say that the evidence relied upon by theApplicants demonstrates that the Maggi label is the primary trade mark used to distinguish theirgoods. Mere use of a particular shape (or other sign) may not be enough to prove that it has acquireda meaning as a secondary trade mark. The less plausible it appears on the face of it that consumerswould take the mark in question as serving a trade mark function (such as containers that carry thegoods) the more important it is to consider what, if anything, has been done to highlight to theconsumer that the mark is a distinguishing sign.

36 The evidence filed does not, in my opinion, demonstrate that anything significant has beendone to highlight to the consumer that the mark is a distinguishing sign. In my assessment there isnothing in the evidence to show that the mark applied for has been used in a distinctive manner as atrade mark or promoted as one. It is always used in conjunction with the Maggi name and logo. Iacknowledge that there may be some promotional material that might bring the bottle itself to theattention of the consumer, for example, the Health Promotion Board recipe cards which depicts thebottle. However, this does not necessarily equate to the average consumer being educated that theshape itself is a guaranteeing sign of trade origin.

37 In addition to lodging sales turnover and advertising and promotional expenditure, theApplicants also lodged results of a public survey conducted in October 2008 to establish the level ofconsumer recognition of the shape applied for and the degree of association between the shape andthe word marks used by the Applicants in relation to products sold in packaging of the shape appliedfor.

38 The survey was designed and carried out by a specialist market research company. Theyinterviewed a sample of 312 people across various residential areas of Singapore. Each respondentwas first shown a visual showcard with a picture of an empty unbranded sample of the bottle as wellas an actual sample of an empty unbranded bottle which is the subject of this application.

39 The survey evidence, titled "Maggi Bottle Trademark Study" appended to Ms Ng's statutorystates the questions put to the respondents as follows:

"A1 Can you please let me know which specific brand(s) , if any, do you associate with this bottleshape?"

A second question, "Any other brands which come to mind?" was then asked.

"B1 Now looking at the bottle shape again, can you let me know if you associate any of the following



brands with this?

7 brands selected by Nestle were listed for respondents. They included MAGGI, TIGER BRAND, LEEKUM KEE, KNORR, KIKKOMAN, HEINZ, and GOM JOO MIN. Respondents were then asked if theyassociated any of the brands with the bottle shapes."

"C1 Which of the following brands do you usually buy and/or use?

The list of brands shown in B1 was shown to the respondents to assist them to answer C1

40 A summary of the results of the survey, as provided in the report titled "Maggi Bottle Trademark Study" reads:

"6. Conclusions

Singaporeans strongly associate the bottle shape with the MAGGI brand. Spontaneousawareness is high at 71%. When aided with a list of brands, 85% of respondents linked thebottle shape with MAGGI. This demonstrates a very strong association between the MAGGIbrand and the bottle shape.

The results may be indicative of MAGGI's dominant market position whereby 77% ofrespondents usually buy MAGGI brand products. Independent from purchase, 73% ofrespondents use MAGGI brand products."

41 The Applicants appear to assume that whenever the shape in question prompted arespondent to mention Maggi, the shape was acting as a guarantee of trade origin. This does notfollow. It is of no value simply to record the number of mentions of a word mark or brand withouttaking into account the context in which the association is made and the overall significance of therespondents' answers.

42 In the case of Im perial Group v Philip Morris [1984] RPC 293, Whitford J. set out certainguidance which should be followed if survey evidence is to be given weight in legal proceedings. Thisguidance makes it clear that questions must not be leading and should not lead the respondent intospeculating about matters about which he or she would not have concerned him or her in an ordinarycommercial situation.

43 However, I find that the questions posed to the respondents, in particular, A1 and B1, areleading and this completely undermines the results of the survey. Apart from the fact that thequestions prompt the respondents to think of "brand", it makes it difficult to determine between thosewho genuinely believed that the shape designates Maggi and those who were not considering theshape but the type of product and guessing that the market leader was most likely to be the correctanswer to the question.

44 The lack of verbatim answers from those who gave the correct answer makes impossible todetermine the extent of guesswork involved.

45 Even if one discounts the shortcomings of the survey, at its best the survey merely establishesthat there is product recognition by a significant proportion of the relevant public. However, toestablish acquired distinctiveness, the Applicants are required to show that Application Mark had beenused distinctively, as a trade mark and by virtue of this use, there was consequent reliance on theshape by consumers as a trade mark. This does not come through anywhere, be it the Applicants'submissions or evidence of use lodged by the Applicants.

Conclusion

46 In light of the above reasons, Trade Mark Application No. T0618780H is refused.

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AL AM AN AU BG BQ BY CH CN CU CW GE HR IS JP KG KR MC MK NO

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856709 - Colin Scott EST. 1801Countries : All | Granted | Refusal | Final decision | No longer designated

151 Date of the registration11.06.2005

180 Expected expiration date of the registration/renewal11.06.2015

270 Language of the applicationEngli

non-traditional tms in asia tms in asia ella cheong ... malaysia levi strauss & co ... with the...

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