You must have come across various classic trademarks, but what about the non-traditional ones? Businesses are increasingly turning to non-conventional marks in the hope of making their brand memorable. 3D shapes are one such. This article provides you with information on the registration of 3D trademarks in Singapore and the criteria for their protection.
Among non-traditional signs, 3D marks are entitled to trademark registration in Singapore as long as they comply with the trademark definition and meet the requirements listed in the Singapore Trade Marks Act. 3D trademarks are an interesting alternative to design as they provide a perpetual monopoly – as long as the trademark registration is renewed. You can read about the essentials of design registration in Singapore for better clarity.
What is a 3D trademark?
Three-dimensional trademarks are signs comprising a three-dimensional shape, such as containers, packaging, or the product itself. As an illustration, below are examples of trademarks recognized as three-dimensional signs and accepted for registration in Singapore:
Trademark no. 40201806284P registered as of 5th April 2018 in class 3 for perfumery; fragrances; perfumes; scented water; toilet water.
“The mark consists of a three-dimensional shape of the packaging of the goods comprised of the design of a bottle in a rectangle form in white with a rectangle shape cap in white in a gold edging and a sitting man figure design in gold inside a gold circle as shown in the representation on the form of application.”
Trademark no. 40201801577Y registered as of 20th October 2017 in class 30 for pastry and confectionery, chocolate and chocolate-based products, edible ices, filled wafers, spread based on cocoa.
“The mark consists of a three-dimensional shape of an egg shaped packaging for the goods with three colours: sky blue, white and orange-red. These colours are depicted in the following order from the top of the egg: sky blue, white and orange-red. There is an orange-red wave design featuring two white and grey droplets at the bottom of the mark as shown in the representation on the notification of international registration.”
Trademark no. 40201910641P registered as of 16th May 2019 for Communications and telecommunications in class 38 and Entertainment services in class 41.
“The mark consists of a three-dimensional shape of an animated character with the devices appearing thereon as shown in the representation on the form of application”.
What are the filing requirements for 3D trademarks?
Like any other trademark, 3D trademarks must:
- be capable of being represented graphically;
- be distinctive;
- not be descriptive of the goods or services claimed in the trademark applications;
- not be customary in the current language or established practices of the trade;
- not be confusingly similar to existing registered trademarks belonging to third parties
Why is it harder to register shape marks in Singapore?
Protection for 3D trademarks is more difficult to obtain due to certain reasons, as described below.
1. A 3D shape will not be registered as a valid trademark if:
– the shape is dictated by the nature of the designated goods. For example, the shape of an egg tray results from the need to provide the shape of eggs for effective storage. Thus, it cannot be protected as a trademark.
– the shape is necessary to provide a technical function or obtain a technical result, in the sense that the shape is motivated by and is the result of technical considerations;
– the shape adds substantial value to the goods. The aim here is to prevent granting a perpetual monopoly over technical solutions as this would jeopardize fair and legitimate competition.
Nestlé’s famous two-finger and four-finger shape marks for KitKat were invalidated by the Singapore registry based on the above grounds (among others) as the shapes were indeed considered necessary for convenient and satisfactory consumption of the products and ease of packaging of the chocolate bar.
2. Another important challenge for applicants lies in the assessment of the distinctive character of 3D marks.
The Intellectual Property Office of Singapore (IPOS) considers that the shape will not be registered as a valid mark unless it is so materially different from basic or common trade shapes, that it enables the relevant public to identify the goods just by its shape. This position was recently reaffirmed in the matter of a trade mark application by Ferrero S.p.A. [2019] SGIPOS 19.
If the mark is considered devoid of distinctive character (which is unfortunately often the case for 3D trademarks), the applicant will have to demonstrate that as a result of extensive use of the mark, a substantial part of the relevant public can identify the goods claimed under the shape as those of the applicant and no other. As per local practice, surveys, sales and advertising figures, extracts of magazines, brochures and newspapers, advertising campaigns, awards, points of sales and local distributors, amongst others, would be considered as proof of use to establish and assess the acquired distinctiveness.
All the evidence submitted must display the representation of the mark exactly as applied for registration. If the shape mark is filed without any other elements, evidence showing a combination of this mark together with word marks and/or figurative signs will not be accepted to establish the acquired distinctiveness.
3D shape marks can be an extremely valuable asset. At IPHub Asia, we have extensive experience in trademark prosecutions. Please get in touch if you have any questions regarding the registration of 3D trademarks in Singapore or about your trademark protection strategy in Southeast Asia.
You can also visit our website to learn more about our services.
