One of the main challenges in securing the registration of 3D trademarks lies in the recognition of its distinctive character. These marks are rarely considered distinctive on their own and face many objections based on this ground.
While it is possible to prove that a 3Dmark has acquired distinctiveness through use, in practice, it seems more difficult to do so compared to classic trademarks. We have detailed below, a recent case summary for illustrative purposes. You can also refer to our guide to the registration of 3D trademarks.
In the matter of a trademark application by Ferrero S.p.A.  SGIPOS 19
Ferrero Group, the famous Italian manufacturer of chocolate and confectionery products, failed to secure the registration of a 3D trademark for its Ferrero Rocher chocolate on the ground that it lacks distinctiveness.
The mark combines several elements including 3D shapes, colors and aspects of packaging. It was filed in class 30 for ‘pastry and confectionery, pralines, stuffed wafer, chocolate and chocolate-based products, ices.’
The duty officer was of the opinion that the golden spherical ball is the main feature of the mark. Since such a shape and its gold color are commonly used in the course of trade for chocolates, the mark has been considered devoid of any distinctive character.
On that basis, the next step was to determine whether the mark has acquired distinctiveness through use. The Adjudicator considered the evidence submitted by the applicant as insufficient to establish that the public in Singapore solely relies on the mark on its own as the indicator of origin without any other elements (such as the word mark FERRERO ROCHER, which featured prominently on a major proportion of the evidence submitted).
Based on the above, the subject mark was refused protection in Singapore.
You can explore the details of this case, as published on the IPOS website, here.
It must be noted that further to this refusal, a fresh application has been filed for the same trademark in combination with the words FERRERO ROCHER, which mark has been considered inherently distinctive and has been accepted for registration as a valid 3D shape, as shown below:
Trademark no. 40201918508V registered as of 23rd August 2019 in class 30 for pastry and confectionery, chocolate and chocolate confectionery containing wafer and fillings, pralines.
“The trade mark consists of a three dimensional element comprising a ball shape chocolate wrapped in a golden foil sitting in a brown paper cup with a white sticker on top of the chocolate with the words FERRERO ROCHER, as shown in the representation on the form of application.”
Many 3D shape marks have been accepted for registration in combination with a word mark in Singapore. Some recent examples are listed below:
Trademark no. 40201910815R registered as of 8th April 2019 in class 33 for whisky with the geographical indication ‘Scotch Whisky.’
“The mark consists of a three dimensional shape of a dark-coloured round bottle with a black cap. A dark grey label covers most of the body of the bottle on one side, with break in the label towards the bottom, to expose a thin strip of the bottle, with the wording “PORT CHARLOTTE” written in white, “HEAVILY PEATED” written below in silver and “ISLAY SINGLE MALT” written at the bottom in black. Partly covering the letters H, P and I on the left is a black roundel with the intertwined initials B and L in the middle and the wording “PROGRESSIVE HEBRIDEAN DISTILLERS” written around between two circular lines.”
Trademark no. 40201906313Y registered as of 8th April 2019 in class 33 for alcoholic beverages (except beers).
“The mark consists of a three-dimensional shape of a bottle with a logo bearing the acronym “JP”, the words “Joseph Perrier”, “as supplied to their late majesties Queen Victoria and King Edward VII”, “Cuvée” and “Royale” and a crown device appearing thereon as shown in the representation on the notification of international registration.”
What you should consider when seeking registration of a 3D trademark in Singapore:
- Make sure that the shape is materially different from basic shapes or those that are common to trade. It should also not fall under the technical results exclusions.
- Consider filing the 3D shape together with other aspects such as word marks and/or logo if the shape is not used on its own.
- Ensure the shape is used as a trademark on its own in the course of trade.
- Contemplate whether other intellectual property rights could offer alternative protection such as designs, copyrights or patents.
Despite expected complications, it is worth considering obtaining registration for 3D trademarks that could be extremely valuable assets for your business.
At IPHub Asia, we have extensive experience in trademark prosecution. Please get in touch if you have any questions regarding your trademark protection strategy in Southeast Asia.
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