Shaping Up Under the New Trade Marks Act:
Shapes as Considered in Consolidated High Court Suits 619/2004 and 674/2004 (Nation Fittings (M) Sdn Bhd vs Oystertec plc and Oystertec plc vs Best Ceramic Pte Ltd).
In 1999, the Trade Marks Act (‘TMA’) was amended to allow for the registration, for the first time in Singapore, as trade marks of unconventional indicia of origin such as shapes, scents and sounds. A flood of new registrations was widely expected to take place.
Six years later, the landmark 2005 case of Nation Fitting (M) Sdn Bhd v Oystertec plc  SGHC 225 was the first decision by the High Court to deal with the registrability of shapes as registered trade marks under the Trade Marks Act 1998.
The decision also considered several other important issues, including whether or not two-dimensional trade marks registered under the old Act automatically protected shapes under the new Act; the effect of differences in shape, brand and pricing on a common law claim of passing off; whether trade mark infringement required the use of a sign as a trade mark to indicate origin; and what appears to be the first reported local case to deal with groundless threats of trade mark infringement.
In this commentary, M Ravindran and Adrian Kwong, who acted for the successful litigants, Nation Fitting and Best Ceramics Pte Ltd, summarise key points of the case as relate to trade marks in three-dimensions.
One of the most recognisable shapes of the 20th century must be the Coca-Cola bottle, with its distinctive fluted profile. Few people know that the shape dates back to 1915, when Coke employees, trying to make their company’s bottles stand out from its competitors, apparently based the design on that of a cacao tree seed pod.
Even fewer people – intellectual property lawyers included – know that the shape of the bottle was once registered as a design; rival traders were thereby legally prevented from copying or adopting the same shape for as long as the law of registered designs protected the novel shape (the design registration expired in the UK in 1940). During that time, many customers must have come to identify the shape of the bottle with the Coca-Cola Company.
But was the bottle’s famous shape a trade mark? Could a shape alone function to indicate the origin of a product, and hence be registered as a trade mark in itself? Despite the company’s intention for the bottle to serve as a trade mark, in 1940, and indeed even half a century later in 1986, this was simply not possible.
Traditional Legal Difficulties in Protecting Shapes as Trade Marks
In the mid-1980s, the Coca-Cola Company applied to register the shape of its bottle as a trade mark in England under the then Trade Marks Act 1938. When its application for registration was refused, the company appealed. In the resulting appeal, the House of Lords held:
It is not sufficient for the Coca-Cola bottle to be distinctive. The Coca-Cola Company must succeed in the startling proposition that a bottle is a trade mark. If so, then any other container or any article of a distinctive shape is capable of being a trade mark. This raises the spectre of a total and perpetual monopoly in containers and articles achieved by means of the Act of 1938 … in my opinion the Act of 1938 was not intended to confer on a manufacturer of a container or on the manufacturer of an article a statutory monopoly on the ground that the manufacturer has in the eyes of the public established a connection between the shape of the container or article and the manufacturer. A rival manufacturer must be free to sell any container or article of similar shape provided the container or article is labelled or packaged in a manner which avoids confusion as to the origin of the goods in the container or the origin of the article. [Emphasis added]
In other words, there could simply be no trade mark significance in the shape of a product alone. While the shapes of products could possibly be protected under the laws of registered designs, copyright and/or patents, they could not be protected under the law of registered trade marks.
To some extent, this is because trade marks, in distinction from the other forms of intellectual property listed above, grant a perpetual monopoly for the mark claimed for as long as the mark is used and the renewal fees paid. All the other IP rights are circumscribed by time: currently, this is a maximum of 15 years for a registered design, 20 years for patents, the life of an author plus 70 years under copyright.
Granting an exclusive perpetual monopoly over a product shape to any one trader would not be desirable for the public good. This was especially true as there was thought to be only a finite number of possible shapes for any given product, especially naturally ‘better’ shapes, for example, a lemon-shaped container for lemon juice. The same reasoning was applied to the law of unregistered trade marks, protected by the tort of passing off.
It was extremely difficult, if not impossible, to succeed in an action for passing off in relation to the shape of a product alone (as opposed to that of containers or packaging). See for example, the old 19th century case of Re James’ Trade Mark (1886) LR 33 Ch D 392, where the English Court of Appeal declined to allow a plaintiff a monopoly in lead of particular shape provided the defendant did not mark his product of the same shape as being the plaintiff’s.
The position was the same in Singapore: it was not possible to register shapes as a trade mark under our Trade Marks Act 1992, nor have there ever been any successful passing off actions in the courts involving the shape of the products alone. In the High Court case of Pernod Ricard SA v Allswell Trading Pte Ltd  1 SLR 603 (‘Pernod’), for example, the court found in favour of the defendants, saying:
It is possible for passing-off to occur by reason of the similarity of the shape, as opposed to the features, but where what is sought to be restrained is the copying of the bulb-shape of the plaintiffs’ bottle which has value in use, as opposed to capricious attributes of shape or colour, the courts are reluctant to allow a plaintiff to secure a monopoly in a new type or design of goods under the guise of a passing-off action. …
One needs to read the reported cases carefully: many cases involving passing off and shapes are actually claims of passing off in relation to the shapes of containers, not the products themselves. For example, Reckitt & Colman Products Limited v Borden Inc  RPC 341 (the ‘Jif case’ involved a lemon-shaped bottle of lemon juice, not the juice itself). Similarly, Pernod was about the shape of the Orangina drink bottle, not the drink itself.
In 1981, therefore, when the two trade marks in suit here were registered, it was not legally possible to register a three-dimensional shape as a trade mark, let alone successfully enforce rights in the same. At that time, therefore, the ‘furthest’ a trade mark registration could go was a two-dimensional device.
Changes in the Law to Allow Registration of Shapes
In 1994, however, the United Kingdom introduced a new Trade Marks Act (‘the 1994 Act’); this was to comply with its international obligations under both the Agreement on Trade-Related Aspects of Intellectual Property (‘TRIPS’) and a European Directive. Among the many changes introduced by the 1994 Act was that it allowed, for the first time, the registration of three-dimensional shapes as trade marks. This was subject to certain requirements and prohibitions; functional shapes, for example, could not be registered, and three-dimensional trade marks had to be expressly identified as such in the application and multiple perspectives of the items filed. The 1994 Act also provided that existing trade marks registered under the old Act would continue to be registered.
On 15 January 1999, Singapore brought its own new Trade Marks Act into force (‘the 1998 Act’). Largely based on the 1994 Act, the 1998 Act (or ‘the Act’) was also intended to implement Singapore’s obligations as a TRIPS signatory. Almost identical provisions as in the 1994 Act were included in relation to shape marks. For registrations that had not yet been registered, applicants could either have them determined under the old law or irrevocably converted to applications under the new TMA in which case the converted applications would have to comply with the procedural and substantive registrability requirements of the new Act.
Background: The Trade Marks in Suit
The two trade marks in suit were T81/02113Z (‘the 113 Mark’) and T81/02114H (‘the 114 Mark’). Both marks consisted of what was described on the Register as a ‘ship window wheel’ device, with T81/02113Z having the additional word ‘CONEX-SANBRA’ and two kidney-shaped features along the rim of the wheel.
The marks were registered in Class 6 of the Register for ‘pipe fittings’, with both registrations being subject to an express disclaimer that ‘(r)egistration of this mark shall give no right to the exclusive use of a device of a profile of a pipe fitting’.
The marks were registered in the name of Oystertec plc, a UK-listed company, which has since changed its name to Advanced Fluid Connections plc. We will refer to it as ‘Oystertec’ or the ‘plaintiff’. The word ‘CONEX-SANBRA’ refers to the name of the proprietor’s predecessor-in-title. Evidence from both sides at trial would show that the products were referred to as ‘CONEX’ or ‘CONEX-SANBRA’ and not by the shape.
Background: The Litigation
In May 2004, Oystertec raided Best Ceramic Pte Ltd (‘Best Ceramic’) and seized from it brass compression pipe fittings supplied by a Malaysian manufacturer, Nation Fittings (M) Sdn Bhd (‘Nation Fittings’). A letter dated 18 June 2004 from Oystertec’s lawyers threatened legal proceedings for infringement.
Faced with this threat, Nation Fittings commenced Suit 619 of 2004 for groundless threat under s 35 of the TMA. Oystertec admitted the threat but claimed that it was not groundless as infringement had taken place under s 27 of the TMA.
Oystertec then commenced separate proceedings in Suit 674 of 2004 against Best Ceramic for alleged infringement and passing off. Best Ceramic denied the allegations and counterclaimed against Oystertec for, inter alia, a declaration that there had been no infringement or passing off, that the trade marks be invalidated and/or revoked under ss 23 and 22 of the TMA respectively, and for groundless threat.
The actions were consolidated and heard together before Justice Andrew Phang Boon Leong (as he then was). To avoid confusion, Oystertec is referred to as the plaintiff and Nation Fittings and Best Ceramic as the defendants.
The Decision of the Court – Summary
In summary, the court found that there was no infringement of either trade mark, nor was passing off made out. The judge went on to also invalidate both trade marks ab initio, as well as find that they would be revoked as they had not been used within the relevant period.
Given these findings, the court also found for the defendants on the groundless threat claims and ordered an injunction against any further groundless threats, an assessment of damages suffered, and costs in favour of the defendants. He also ordered that the seized pipe fittings be returned to Best Ceramics.
Oystertec did not appeal.
Decision of the Court – Major Points
Many points were touched on the judgment. We will focus here just on those parts dealing with shapes.
Were existing two-dimensional trade mark registrations automatically ‘converted’ to three-dimensional trade marks under the new 1998 Act without the need to make a new and separate application?
The plaintiff argued that by virtue of the transitional provisions of the new Act, the existing two-dimensional registrations were automatically ‘converted’ into three-dimensional ones. This was argued on the basis of a literal reading of the transitional provisions contained in the Third Schedule to the TMA, which provided that existing registered marks would be registered marks for the purposes of the new Act (s 109).
Whether this was the case was identified by the plaintiff and the judge as a ‘threshold issue’ which the plaintiff had to surmount if its trade mark infringement claims could proceed at all.
After examining principles of statutory interpretation, the judge considered the practical effect of adopting the plaintiff’s case. The judge felt that it would have been ‘an exercise in futility’ if old trade marks lapsed and re-registration of existing marks would have been required; it would also have created a ‘logistical logjam or even nightmare’. He therefore felt that Parliament intended that existing registrations were to be treated as continuing as registered without requiring the ‘additional, and practically otiose’ step of re-registration.
Having said that, the judge also went on to take account of the additional registration requirements that were required of shape marks under the 1998 Act, and held that the transitional provisions were not meant to confer, retrospectively, any additional rights that did not exist under the repealed Act.
In other words, the proprietors of existing marks would continue to enjoy whatever rights they held under the old Act under the new Act, but if one of them wanted any of the additional rights which were now available under the new Act, a separate fresh application would have to be filed. In such a case, the new application would have complied with the requirements under the new Act (and its subsidiary legislation, the Trade Marks Rules). These includes, for shapes, having to expressly claim and provide multiple representations of the mark from various angles.
Several examples were submitted to the court of proprietors who, already owning two-dimensional marks for their products, did in fact file new shape mark applications under the new Act. These included registrations for the triangular Toblerone chocolate bar, the Ferragamo buckle, the Polo Mint sweet, and even the Coca-Cola Company.
It was noted by the judge that Oystertec had in fact filed such a fresh three-dimensional application of its own, the outcome of which is still pending.
Comparing Oystertec’s fresh application and the 113 and 114 Trade Marks, there is a clear difference in what could potentially be protected. For one thing, it is evident from the pending application – with its multiple perspectives of the pipe fitting – that the intended mark is anything but a two-dimensional device; this is not at all clear from the ‘ship window wheel’ devices.
Indeed, whether a person could ascertain what exactly the mark being claimed was from the Register was also relevant to the court’s decision. The judge held that the two marks were not only two-dimensional plan drawings, but were represented as such on the publicly-available Register: there was ‘no representation or depiction of any form in respect of depth or perspective’.
This was in contrast to several other trade marks registered under the old UK and Singapore TMAs in which perspective could be ascertained.
In this respect, the judge explained the decision in a recent English High Court case involving the shape of a three-headed electric shaver: Koninklijke Philips NV v Remington Consumer Products Ltd  FSR 17 (‘Philips 2005’).
Oystertec cited Philips 2005, an infringement action under the 1994 TMA and the latest in a saga of litigation in several jurisdictions involving a three-headed shaver, to argue that existing marks could be used to stop the use of competing products of a similar shape. The ‘452 Mark’ in suit in Philips 2005 was not a plan drawing that lacked perspective, and it allowed even an ‘average person’ to perceive a degree of depth.
It was also relevant that Philips did not attempt to enforce its own existing two-dimensional trade marks, in which no depth was – as in the case of the marks in suit – visible. The judge held that there was a ‘significant legal difference’ between the two.
In the Nation Fittings case, the judge held that both the 113 and 114 Trade Marks ‘were two-dimensional trade marks and were registered as such’; there was ‘nothing in both of them to suggest any intention to appropriate a three-dimensional right as such’.
On that ground alone, the judge found in favour of the defendants that the two marks did not cover shapes or have any three-dimensional effect, thereby disposing of the plaintiff’s trade mark infringement claims. He did, however, go on to deal with the various other issues raised in the actions.
What does this mean?
This decision is extremely important for proprietors of existing trade marks registered under the old Act who now want to claim three-dimensional protection for a shape that they use as a trade mark – and want to be able to enforce such rights under the TMA. Unless the proprietor’s existing trade marks clearly disclose depth and perspective, they take the risk that these marks will not provide sufficient protection.
At the same time, it means that rival traders can, in the absence of valid design or three-dimensional trade mark registrations, freely adopt aspects of shape, even where there are existing two-dimensional trade marks. We would suggest traders considering such a course of action to seek advice and do the proper trade mark searches; at the same time, potentially affected trade mark proprietors may also wish to consider filing new applications.
Both trade marks were invalidated under s 23 TMA
Under s 23(1) of the TMA, a registered trade mark may be invalidated on the ground that it was registered in breach of s 7 of the TMA. Under s 7(1)(a) of the TMA, a mark may not be registered if it does not fulfil the requirement under s 2(1) TMA that it be capable of distinguishing goods or services; on this note, the defendants argued that product recognition alone was insufficient to constitute this capability to distinguish.
The defendants cited the English High Court decision in the Viennetta case (Societe de Produits Nestle SA v Unilever plc  EWHC 2709), which involved an attempt to register the shape of the Viennetta ice-cream confectionery as a three-dimensional trade mark. The attempt was unsuccessful:
… it must be proved that consumers rely on the shape alone as a badge of trade origin in the sense that they would rely on that shape alone as an indication of trade origin ... if that cannot be proved, then the shape is not properly a trade mark, it does not have a “distinctive character” for the purposes of trade mark law … .
In a different case, the subject of attempted registration was the Yakult bottle, which was described by the English High Court in Yakult Honsha KK’s Trade Mark Application  RPC 39 as having the shape of ‘a headless dumpy human figure’, the point was made that even an unusual or attractively shaped container would not mean that it would be taken as an indication of origin. The relevant question was not whether the appearance was memorable, but whether by itself the appearance of the product would convey trade mark significance: ‘Even were (the Yakult bottle) to be recognised as of different shape to other bottles on the market, there is nothing inherent in it which proclaims it as having trade mark significance’. (Per Laddie J)
Based on the evidence from both sides at trial which showed that customers identified Oystertec’s product as ‘Conex’, as well as evidence that the 114 mark did not seem to have been used on its own or even been registered in the UK (Oystertec’s home country), the defendants submitted that Oystertec never actually intended to use the 114 mark as a trade mark by itself. The judge agreed, including on the ground that no evidence at all was adduced at trial of any identification of the shape as a trade mark.
Given that s 7 TMA deals with the registration and registrability of trade marks, the judge’s decision therefore impacts those who would wish to register all unconventional trade marks – the applicants must show trade mark significance, or risk failing in their applications. This must be significant to counter the threat of opened floodgates.
The judge went to consider the defendants’ alternative arguments under s 7(1)(b) (the marks are ‘devoid of any distinctive character’) and s 7(6) (bad faith); while he allowed the former claim, he denied the latter, but still invalidated both marks under s 23 nonetheless. It should be noted that he also revoked both trade marks in suit on the grounds that they had not been used; this application for revocation was made under s 22(1) TMA.
There was no passing off in relation to the shape of the products
Lastly, the judge turned to the plaintiff’s alternative claim of passing off. Although not pleaded as such by the plaintiff, the parties proceeded at trial on the basis that the alleged passing off was only in relation to the shape of the defendants’ SUNSHINE product.
As mentioned above, it has traditionally been difficult to succeed in passing off in relation to the shape of a product. As stated by Jacob J in Hodgkinson & Corby Ltd v Wards Mobility Services Ltd  1 WLR 1564 at 1574: ‘[i]t is, I think precisely because the difficulties of proof are so great that successful cases of passing off based on the shape of goods are so rare’.
In Jif, the plaintiff proved that the goodwill lay in the shape of the getup of the container; this was done by what the trial judge called a ‘vast volume’ of ‘extremely impressive evidence’, including several experiments (one by both parties) and a whole cross-section of witnesses ranging from the organisers of the surveys to housewives to average shoppers. It was an exceptional decision on the facts; indeed, comments were made about this on appeal.
In Pernod, the evidence tendered by the plaintiff included a variety of promotional material, as well as evidence from the plaintiff’s staff and a customer who personally mistook the plaintiff’s bottle with that of the defendants. Despite all this, it should be noted, the plaintiff still did not succeed in proving goodwill in the shape of its bottle; the action was dismissed with costs.
In the Nation Fittings case, the plaintiff did not succeed in proving goodwill based on the evidence placed before the court, whether in relation to the shape of its products or its two trade marks. The passing off action against Best Ceramic therefore failed.
The judge went on, however, to also consider the other elements of passing off, namely misrepresentation and damage.
In considering whether there was misrepresentation, the issue was whether Best Ceramic had made a false representation that was likely to lead potential and actual customers to believe that Nation Fittings’ pipe fittings were Oystertec’s.
The judge cited the English High Court decision of Benchairs Limited v Chair Centre Limited  RPC 429 at 435 in which the court stated, ‘[i]f there is no such false representation there can be no passing off, and the mere copying of the shape of the plaintiffs’ article is not in itself such a representation’.
In his decision on the issue of misrepresentation, the learned judge found that confusion was not likely, including because: (a) the products were not identical; (b) no confusion was actually occasioned; (c) the price of the defendants’ products was ‘significantly lower’ than the plaintiff’s; and (d) that the average customers in question – ie that the purchasing public – were ‘either a plumber or contractor’; these were not likely to be confused as they would be familiar with the different brands in the market. Also, customers for these products were likely to buy based on the specifications and attributes of the products and not by brand.
It was noted by the judge that the evidence showed that the ribs had a ‘significant functional value’, allowing the manipulation in confined spaces; this militated against their being distinctive in a trade mark sense. He applied the following statement from Pernod:
The primary meaning of the shape of the bottle as bulb-shaped is descriptive. The plaintiffs have a heavy burden when they seek to prove that a shape which is prima facie functional has acquired a secondary meaning.
As there was no misrepresentation and sufficient differentiation in usage, and insufficient proof of damage, the judge dismissed the passing off action.
The learned judge proceeded to observe thus (ibid):
Anyone is entitled, subject to some monopoly or statutory right preventing him, to copy and sell any article on the market, and false representation and passing off only arise when a defendant does something further which suggests that the article which he is selling is that of the plaintiff.
As can be gathered, the Nation Fittings case broke new ground in many ways. It has provided guidance not only for those who wish to register and protect three-dimensional trade marks, but importantly, for their rivals in trade. What one can and cannot do in business has now been clarified.
Traders who rely on the shape of their products in a trade mark sense should reconsider whether their existing trade marks – if any – are three-dimensional. Even if they are not, and are two-dimensional in nature, the Nation Fittings decision does seem to allow some possibility of protection for shapes provided that the marks as found on the Register disclose ‘depth or perspective’.
Although this was not a case directly involving the fresh registration of a trade mark under the 1998 Act, it is worth noting the difficulties – both as laid down in the Singapore decision and in the UK decisions cited therein – in successfully obtaining a three-dimensional trade mark registration.
It is also worth noting how difficult it is to succeed in a passing off claim based on the distinctive shape of one’s product alone; the use by rival traders of the identical shape coupled with appropriate distinguishing material – such as a brand – will make that claim extremely difficult in all but the rarest of cases.
All in all, it would appear that no floodgates have in fact opened with the 1998 Act with regard to unconventional trade marks. At the time of writing this, a search of the Trade Marks Register shows at most several hundred three-dimensional trade marks (including pending applications); at the same time, there are no registered sound or scent marks at all.
At the end of the day, a trade mark serves to indicate the origin of the goods or services in relation to which it is to be used. While the law allows the use of three-dimensional shapes as trade marks, care is required to make sure that the law does not give more protection than is necessary or justified. In the words of the judge:
I should add that I am fortified in my decision by the broader consideration to the effect that whilst the court should recognise and give effect to the rights of registered trade mark holders wherever appropriate, it should also bear in mind the fact that such rights should not be permitted to either blatantly or subtly develop into disguised monopolies which stifle or stymie the general public interest and welfare. Put simply, registered trade mark holders ought, except in the face of the clearest indications by the courts or Legislature to the contrary, to be expected to demonstrate the legal basis for the rights they claim … .
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* Images of the trade marks mentioned in the article can be found via search facilities at the website of the Intellectual Property Office of Singapore (www.ipos.com.sg). The authors will be happy to assist readers if requested.