Shape Marks - Intellectual Property Office of Singapore

Shape marks7 ASSESSING DISTINCTIVENESS OF SHAPE MARKS(a) Whether the shape is devoid of distinctive characterEven if the preliminary obstacle under Section 7(3) is overcome, it is still necessaryto ascertain whether a 3-D mark is to be refused registration under one or more of theabsolute grounds for refusal – including whether the mark is devoid of distinctivecharacter. The ECJ in Philips v Remington has settled for us the question whether“there is a special category of marks which, even though not devoid of distinctivecharacter in fact are none the less incapable of being a trade mark as a matter oflaw” and the answer is “no”. This means that there is no need to consider thequestion whether the 3-D mark can, by itself, function as a trade mark within thedefinition of a trade mark because, the answer is yes, a 3-D mark can function as atrade mark. What needs to be considered is whether the mark is devoid of distinctivecharacter or is objectionable due to any of the other absolute grounds of refusal (e.g.the mark is descriptive of the goods).With respect to the absolute grounds of refusal, there is no distinction between thedifferent categories of trade marks. The criteria for assessing the distinctive characterof 3-D marks are thus no different from those to be applied to other categories ofmarks. As such, in order to be capable of distinguishing the goods, the shape of anarticle in respect of which a sign is registered does not require any capricious additione.g., an embellishment which has no functional purpose (see Philips v Remington).The test is simply, whether the mark serves to identify the product in respect of whichregistration is applied for as originating from a particular person, and thus, is capableof distinguishing the goods and services of one person from goods and services ofother persons. A trade mark’s distinctiveness must be assessed by reference to first,the goods or services in respect of which registration is sought and second, byreference to the perception of the relevant persons, namely the consumers of thegoods or services (Rewe Zentral v OHIM [2002] ECR II-705, paragraph 27; Boschv OHIM [2002] ECR II-4881, paragraph 20). It is relevant to look at the presumedexpectations of the average consumer of the category of goods or services in question,and assuming that such a consumer is reasonably well informed and reasonablyobservant and circumspect (see Philips v Remington). So, “… it may in practice bemore difficult to establish distinctiveness in relation to a shape of product mark thana word or figurative trade mark. But whilst that may explain why such a mark isrefused registration, it does not mean that it cannot acquire distinctive characterfollowing the use that has been made of it and thus registered as a trade mark…” (seeLinde AG (Case C-53/01) at paragraph 48).As the perception of the average consumer is a relevant question, “account must betaken of the fact that the perception of the relevant section of the public is notnecessarily the same in relation to a figurative mark consisting of a faithfulrepresentation of the product itself as it is in relation to a word mark or a figurativeor three dimensional mark not faithfully representing the product. Whilst the publicVersion 1 (13 January 2006) Page 9 Intellectual Property Office of Singapore