Nestlé fails to register 3-D shape of red mug in Singapore

In Re Société des Produits Nestlé SA (2007) SGIPOS 1, the Singapore Trademarks Registry has refused Société des Produits Nestlé SA's application, under the Madrid Protocol, to register the three-dimensional shape of a red mug as a trademark for coffee in Singapore. In an ex parte hearing, the registrar refused Nestlé's application under Section 7(1)(b) and 7(2) of the Singapore Trademarks Act 1998.

Section 7(1)(b) provides that:

"7(1) The following shall not be registered:
(b) trademarks which are devoid of any distinctive character."

Section 7(2) provides that:

"7(2) A trademark shall not be refused registration by virtue of Subsection (1)(b), (c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it."

In examining the application under Section 7(1)(b) of the act, the registrar held that the mark was devoid of distinctive character as it bore no distinguishing features apart from being a three-dimensional red mug with a gold band around its exterior, containing a liquid which appeared to be coffee. The gold band was merely decorative and did not add much in raising its distinctiveness. Further, the mark was descriptive of the goods claimed (coffee) as it was the normal manner of containing the coffee for consumption.

The registrar was also not persuaded to accept Nestlé's application by virtue of Nestlé's prior Singapore registration for a similar mark, which had been registered prima facie. The Singapore precedent was distinguished from the current application on the basis that (i) the former was a conventional two-dimensional mark which conferred different rights on a proprietor from a three-dimensional mark, and (ii) the former was filed under the old Trademarks Act and had it been accepted under the old act, it would have been subjected to separate disclaimers over the device of the red mug or coffee beans, resulting in Nestlé not having exclusive rights in the device of the red mug or coffee beans.

With respect to Section 7(2) of the new act, the registrar noted that Nestlé had merely lodged evidence of use of a composite two-dimensional mark with other accompanying elements and features. The two-dimensional mark was also used with Nestlé's very prominent house mark NESCAFÉ. Although use of a mark could be in the form of a secondary mark, the registrar was not able to make such an inference in this case. In the absence of any evidence of use of the three-dimensional shape of a red mug of coffee, the registrar found that Nestlé had failed to show that the mark had acquired distinctiveness through use.

Nestlé had, in support of its submission under Section 7(2) of the act, referred the registrar to its UK registration which was obtained after evidence of use and survey evidence was lodged. The registrar did not find the UK precedent persuasive as it was a two-dimensional mark while the current application was a three-dimensional mark and also, the registrar was not cognizant of the evidence that was tendered in the United Kingdom and he was not prepared to follow the UK precedent based on the evidence lodged by Nestlé in Singapore. Further, unlike the UK precedent, no survey evidence was tendered by Nestlé.

Dedar Singh Gill and Ho Weiyun, Drew & Napier LLC, Singapore