Shape Marks - Intellectual Property Office of Singapore

Shape marks8 ACQUIRED DISTINCTIVENESS(a) Whether the 3-D mark has acquired distinctiveness by virtue of useNotwithstanding that the mark may be prima facie devoid of distinctive character, it isstill acceptable if it has acquired distinctiveness by virtue of the use made of it(Section 7(2) of the Trade Marks Act allows registration of marks which havebecome distinctive by virtue of use made of it). In assessing the distinctive characterof a mark, the following may be taken into account:(i) the market share held by the mark;(ii) how intensive, geographically widespread and long standing use of the markhas been;(iii) the amount invested by the undertaking in promoting the mark;(iv) the proportion of the relevant class of persons who, because of the mark,identify goods as originating from a particular undertaking;(v) statements from chambers of commerce and industry or other trade andprofessional associations.If on the basis of those factors, the Registrar finds that the relevant class of persons orat least a significant proportion thereof, identify goods originating from a particularundertaking because of the trade mark on the basis of acquired distinctiveness therequirement for registering the mark is satisfied (see Windsurfing Chiemsee v Boots(Case C-108/97)).Again, the test of acquired distinctiveness is from the perspective of the averageconsumer. The distinctive character of a sign consisting in the shape of a producteven that acquired by the use made of it must be assessed in the light of thepresumed expectations of an average consumer of the category of goods orservices in question who is reasonably well informed and reasonably observant andcircumspect. The essential consideration is that the relevant class of persons of theproduct identifies the 3-D shape as originating from a given undertaking as a result ofthe use of the mark as a trade mark and as a result of the nature and the effect of it- which make it capable of distinguishing the product concerned from those of otherundertakings.In this regard, it is not enough to prove that the public recognised the shape as theproduct of a particular manufacturer. It has to be proved that consumers regardedthe shape alone as a badge of origin in the sense that they relied upon that shape aloneas an indication of trade origin, particularly to buy the goods.(b) Evaluation of evidenceExampleDualit Ltd’s (Toaster Shapes) Trade Mark Applications [1999] R.P.C. 890Version 1 (13 January 2006) Page 17 Intellectual Property Office of Singapore