Nestlé v Petra Foods: Shape Mark Distinctiveness & Technical Functionality in Trade Mark Law
Societe Des Produits Nestlé SA and Nestlé Singapore (Pte) Ltd, the Appellants, appealed against the High Court's decision to invalidate and revoke their registered trade marks for the two-finger and four-finger Kit Kat shapes. Petra Foods Limited and Delfi Singapore Pte Ltd, the Respondents, had successfully counterclaimed for invalidation and groundless threats of trade mark infringement. The Court of Appeal of the Republic of Singapore, comprising Sundaresh Menon CJ, Chao Hick Tin JA, Andrew Phang Boon Leong JA, Tay Yong Kwang JA and George Wei J, dismissed the appeal, finding that the Registered Shapes lacked distinctiveness, were caught by the technical result prohibition, and had not been put to genuine use. The court also held that the Registered Shapes could not be protected as well-known trade marks.
1. Case Overview
1.1 Court
Court of Appeal of the Republic of Singapore1.2 Outcome
Appeal Dismissed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Final Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Nestlé's appeal against the invalidation and revocation of its Kit Kat shape marks fails. The court finds the shapes lack distinctiveness and serve a technical function.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Societe Des Produits Nestlé SA | Appellant, Plaintiff | Corporation | Appeal Dismissed | Lost | |
| Nestlé Singapore (Pte) Ltd | Appellant, Plaintiff | Corporation | Appeal Dismissed | Lost | |
| Petra Foods Limited | Respondent, Defendant | Corporation | Counterclaim Allowed | Won | |
| Delfi Singapore Pte Ltd | Respondent, Defendant | Corporation | Counterclaim Allowed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Sundaresh Menon | Chief Justice | Yes |
| Chao Hick Tin | Judge of Appeal | No |
| Andrew Phang Boon Leong | Judge of Appeal | No |
| Tay Yong Kwang | Judge of Appeal | No |
| George Wei | Judge | No |
4. Counsels
4. Facts
- Nestlé owns registered trade marks for the two-finger and four-finger Kit Kat shapes.
- Petra Foods sells chocolate products under the Take-It and Delfi Take-It trade marks.
- Nestlé claimed Petra Foods' Take-It products infringed its trade mark rights.
- Petra Foods counterclaimed for invalidation and revocation of Nestlé's trade mark registrations.
- The High Court allowed Petra Foods' counterclaim, invalidating Nestlé's trade mark registrations.
- Nestlé appealed the High Court's decision.
- The Kit Kat four-finger product was launched as Rowntrees Chocolate Crisp in 1935.
- The Kit Kat two-finger product was launched in 1963.
5. Formal Citations
- Societe Des Produits Nestlé SA and another v Petra Foods Limited and another, Civil Appeal No 200 of 2014, [2016] SGCA 64
6. Timeline
| Date | Event |
|---|---|
| Paris Convention for the Protection of Industrial Property | |
| Re James Trade Mark, James v Soulby | |
| Diplomatic Conference on the Revision of the Paris Convention held in The Hague | |
| Four-finger Kit Kat product launched as Rowntrees Chocolate Crisp | |
| Rowntrees Chocolate Crisp rebranded as Kit Kat | |
| Kit Kat products sold in Singapore since the 1950s | |
| PT Ceres first manufactured a moulded chocolate wafer under the trade mark PATSY in Indonesia | |
| Two-finger Kit Kat product launched | |
| PT Ceres manufactured and sold moulded chocolate wafers under the WINDMOLEN mark | |
| Estimated that more than 2.4m kg of Kit Kat sold in Singapore between 2003 and 2010 | |
| Letter from first appellant's solicitors | |
| Letter from first appellant's solicitors | |
| Suit No 1081 of 2012 | |
| Civil Appeal No 200 of 2014 | |
| Societe Des Produits Nestlé SA and another v Petra Foods Ltd and another | |
| Judgment reserved | |
| Judgment reserved | |
| Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) | |
| Judgment delivered |
7. Legal Issues
- Distinctiveness of Shape Marks
- Outcome: The court held that the Registered Shapes lacked distinctiveness, both inherent and acquired.
- Category: Substantive
- Sub-Issues:
- Inherent Distinctiveness
- Acquired Distinctiveness
- Reliance on Shape as Trade Mark
- Technical Result Prohibition
- Outcome: The court held that the Registered Shapes consisted exclusively of the shape of goods necessary to obtain a technical result.
- Category: Substantive
- Revocation for Non-Use
- Outcome: The court held that the registration of the Registered Shapes should be revoked for non-use.
- Category: Substantive
- Well-Known Trade Mark Protection
- Outcome: The court held that the Registered Shapes should not be protected as well-known trade marks.
- Category: Substantive
- Groundless Threats of Trade Mark Infringement
- Outcome: The court allowed the respondents' counterclaim for groundless threats of trade mark infringement.
- Category: Substantive
8. Remedies Sought
- Injunction
- Damages
- Declaration that threats were unjustifiable
- Invalidation of Trade Mark Registration
- Revocation of Trade Mark Registration
9. Cause of Actions
- Trade Mark Infringement
- Counterclaim for Invalidation of Trade Mark Registration
- Counterclaim for Groundless Threats of Trade Mark Infringement
10. Practice Areas
- Trade Mark Registration
- Trade Mark Infringement
- Intellectual Property Litigation
11. Industries
- Food and Beverage
- Confectionery
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Re James Trade Mark, James v Soulby | Court of Appeal | Yes | Re James Trade Mark, James v Soulby (1886) 33 Ch D 392 | England and Wales | Cited for the principle that a trade mark must be distinct from the product to which it is applied. |
| Re Coca-Cola Co’s Application | House of Lords | Yes | Re Coca-Cola Co’s Application [1986] 2 All ER 274 | England and Wales | Cited to illustrate the restrained attitude towards the protection of shape marks. |
| Societe Des Produits Nestlé SA and another v Petra Foods Ltd and another | High Court | Yes | [2014] SGHC 252 | Singapore | The judgment being appealed from. |
| Bongrain SA’s Trade Mark Application | English Court of Appeal | Yes | [2005] RPC 14 | England and Wales | Cited for the principle that a fancy shape alone is insufficient to denote trade origin. |
| Société des Produits Nestlé SA v Cadbury UK Ltd | English High Court | Yes | [2014] ETMR 17 | England and Wales | Cited for the test for acquired distinctiveness, requiring reliance on the mark as indicating origin. |
| Cnl-Sucal NV SA v Hag GF AG | European Court of Justice | Yes | [1990] 3 CMLR 571 | European Union | Cited for the principle that a trade mark gives the consumer a guarantee of the origin of the marked product. |
| Henkel KGaA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) | European Court of Justice | Yes | [2005] ETMR 44 | European Union | Cited for the principle that consumers do not typically assume product origin based on shape alone. |
| Wal-Mart Stores Inc v Samara Bros Inc | United States Supreme Court | Yes | (2000) 529 US 205 | United States | Cited for the principle that consumers do not typically equate product design with source. |
| Bang & Olufsen A/S v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) | Court of First Instance of the European Union | Yes | Case No T-460/05 (10 October 2007) | European Union | Cited as an example of a case where the shape of a hi-fi speaker was found not to be devoid of distinctive character. |
| DaimlerChrysler Corporation v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) | Court of First Instance of the European Union | Yes | Case No T-128/01 (6 March 2003) | European Union | Cited as an example of a case where the shape of a front grille of a vehicle was found not to be devoid of distinctive character. |
| Nestlé Waters France v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) | Court of First Instance of the European Union | Yes | Case No T-305/02 (3 December 2003) | European Union | Cited as an example of a case where the shape of a bottle was considered. |
| Unilever Plc’s Trade Mark Applications | High Court | Yes | [2003] RPC 35 | England and Wales | Cited for the principle that trade mark registries should not act as design registries. |
| Nation Fittings (M) Sdn Bhd v Oystertec plc and another suit | High Court | Yes | [2006] 1 SLR(R) 712 | Singapore | Cited for the principle that an unusual shape alone is insufficient to be considered a trade mark. |
| Société des Produits Nestlé SA v Cadbury UK Ltd (No 2) | English High Court | Yes | [2016] EWHC 50 (Ch) | England and Wales | Cited regarding the distinction between 'mere association' and 'reliance' in establishing acquired distinctiveness. |
| Société des Produits Nestlé SA v Cadbury UK Ltd | European Court of Justice | Yes | [2015] Bus LR 1034 | European Union | Cited for the principle that establishing 'mere association' is insufficient to prove acquired distinctiveness. |
| Philips Electronics NV v Remington Consumer Products Ltd (No 1) | English Court of Appeal | Yes | [1999] RPC 809 | England and Wales | Cited for the principle that exclusive association of a shape with a trader does not necessarily mean it has acquired significance as an indicator of origin. |
| Beecham Group plc and another v Triomed (Pty) Limited | South African Supreme Court of Appeal | Yes | [2002] 4 All SA 193 | South Africa | Cited for the principle that recognition of a product shape by pharmacists does not necessarily mean it is regarded as a guarantee of origin. |
| Oberbank AG v Deutscher Sparkassen-und Giroverband eV | CJEU | Yes | [2014] Bus LR 786 | European Union | Cited by the appellants regarding the test for acquired distinctiveness. |
| Reckitt Coleman Products v Borden Inc | House of Lords | Yes | [1990] 1 WLR 491 | England and Wales | Cited for the principle that the 'crucial point of reference' for a shopper is the shape itself. |
| Hodgkinson Corby Ltd v Wards Mobility Services Ltd | High Court | Yes | [1995] FSR 169 | England and Wales | Cited for the distinction between recognition and use as a badge of origin. |
| Fredco Trading Ltd v Miller | New Zealand High Court | Yes | (2006) 8 NZBLC 101 | New Zealand | Cited as an example where the shape of a product itself acquired trade mark significance. |
| Chocolaterie Guylian NV v Registrar of Trade Marks | Federal Court of Australia | Yes | [2009] FCA 891 | Australia | Cited as an illustration of a 'limping' trade mark. |
| J H Whittaker & Sons Limited v Empire Confectionery Limited | New Zealand Trade Mark Registry | Yes | [2015] NZIPOTM 4 | New Zealand | Cited regarding the visibility of a shape at the point of purchase. |
| Lego Juris A/S v Office for Harmonisation in the Internal Market | European Court of Justice | Yes | [2010] ETMR 63 | European Union | Cited for the principle that s 7(3) lays down absolute grounds for refusal of registration regardless of the distinctive character of the shape mark. |
| Philips Electronics NV v Remington Consumer Products Ltd | English Court of Appeal | Yes | [2003] RPC 2 | England and Wales | Cited for the rationale of preventing trade mark protection from granting a monopoly on technical solutions. |
| Qualitex Co v Jacobson Products Co, Inc | United States Supreme Court | Yes | Qualitex Co v Jacobson Products Co, Inc 514 US 159 (1995) | United States | Cited for the public interest in ensuring market efficiency as the most compelling justification for the protection of trade marks. |
| Koninklijke Philips Electronics NV v Remington Consumer Products Limited | English Court of Appeal | Yes | [2006] FSR 30 | England and Wales | Cited regarding the test for ascertaining whether a shape mark is caught by the 'technical result' prohibition. |
| Koninklijke Philips NV v Remington Consumer Products Ltd | English High Court | Yes | [2005] FSR 17 | England and Wales | Cited regarding the clover leaf design of the shape mark. |
| Simba Toys GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) | General Court of the European Union | Yes | [2015] ETMR 15 | European Union | Cited regarding the analysis of the technical result exclusion. |
| Love & Co Pte Ltd v The Carat Club Pte Ltd | High Court | Yes | [2009] 1 SLR(R) 561 | Singapore | Cited regarding what constitutes 'genuine use in the course of trade'. |
| Weir Warman Ltd v Research & Development Pty Ltd | High Court | Yes | [2007] 2 SLR(R) 1073 | Singapore | Cited regarding what constitutes 'genuine use in the course of trade'. |
| Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd and another and another appeal | Court of Appeal | Yes | [2009] 2 SLR(R) 814 | Singapore | Cited regarding what constitutes 'genuine use in the course of trade'. |
| La Mer Technology Inc v Office for Harmonisation in the Internal Market | Court of First Instance | Yes | [2008] ETMR 9 | European Union | Cited regarding the examination of whether a trade mark had been put to genuine use. |
| Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) | Court of Appeal | Yes | [2016] 4 SLR 86 | Singapore | Cited regarding the scope of the groundless threats provision. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Trade Marks Act 1998 (Act 46 of 1998) | Singapore |
| Trade Marks Act 1938 (c 22) (UK) | United Kingdom |
| Trade Marks Act 1994 (c 26) (UK) | United Kingdom |
| Trade Marks Act 1994 (Cth) | Australia |
| Trade Marks Act 1995 (Cth) | Australia |
| Trade Marks Act 2002 (NZ) | New Zealand |
| Copyright Act (Cap 63, 2006 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Shape Mark
- Distinctiveness
- Technical Result
- Genuine Use
- Well-Known Trade Mark
- Trade Mark Infringement
- Groundless Threats
- Trade Mark Registration
- Invalidation
- Revocation
15.2 Keywords
- trade mark
- shape mark
- distinctiveness
- technical result
- non-use
- well-known trade mark
- Kit Kat
- Nestlé
- Petra Foods
- Take-It
- Singapore
- intellectual property
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademark Infringement | 90 |
| Trademarks | 90 |
| Well Known Trade Marks | 85 |
| Trademark Law | 80 |
| Trade names | 75 |
| Administrative Law | 20 |
| Civil Procedure | 10 |
| Contract Law | 5 |
16. Subjects
- Trade Mark Law
- Intellectual Property
- Shape Marks
- Distinctiveness
- Technical Functionality
- Non-Use
- Well-Known Trade Marks