Shape Marks - Intellectual Property Office of Singapore
Shape Marks - Intellectual Property Office of Singapore 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
Shape marksMark: A series of 6 marks showing 2 slice, 4 slice and 6 slice versions of 2 distinctdesigns of toaster.Class 11: Toasters.Objection: Devoid of distinctive character.Decision: It cannot be said that if the shapes had never been used by the applicant,another trader could not use the shape fairly or honestly. Acquired distinctivenesswas not established as the evidence showed that the public surveyed recognised thefeatures rather than the shape.(c) De facto monopolyIn cases where applicant is the only supplier of those goods, use of the shape of thegoods may be sufficient to give it distinctiveness under Section 7(2) if as a result ofuse, a substantial portion of the consumer associates the shape as that belonging to theapplicant and no other or believes that goods of that shape comes from the sameapplicant (see Philips v Remington).Dualit Ltd’s case, paragraph 119, “…The ECJ has recently re-stated theposition it took in Windsurfing in the course of giving its judgement in thePhilips case. Although the court accepted that it maybe possible todemonstrate the acquisition of trade mark character during a period inwhich a party is the only supplier of the goods to the market, itVersion 1 (13 January 2006) Page 18 Intellectual Property Office of Singapore
- Page 1 and 2: SHAPE MARKSCopyright © 2012 Intell
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- Page 7 and 8: Shape marks5 SPECIFICATIONWhere the
- Page 9 and 10: Shape marksAlthough the natural sha
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- Page 16 and 17: Shape marksClass 29: Ice cream prod
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- Page 22 and 23: Shape marks10 SHAPE OF PACKAGING OR
<strong>Shape</strong> marksMark: A series <strong>of</strong> 6 marks showing 2 slice, 4 slice and 6 slice versions <strong>of</strong> 2 distinctdesigns <strong>of</strong> toaster.Class 11: Toasters.Objection: Devoid <strong>of</strong> distinctive character.Decision: It cannot be said that if the shapes had never been used by the applicant,another trader could not use the shape fairly or honestly. Acquired distinctivenesswas not established as the evidence showed that the public surveyed recognised thefeatures rather than the shape.(c) De facto monopolyIn cases where applicant is the only supplier <strong>of</strong> those goods, use <strong>of</strong> the shape <strong>of</strong> thegoods may be sufficient to give it distinctiveness under Section 7(2) if as a result <strong>of</strong>use, a substantial portion <strong>of</strong> the consumer associates the shape as that belonging to theapplicant and no other or believes that goods <strong>of</strong> that shape comes from the sameapplicant (see Philips v Remington).Dualit Ltd’s case, paragraph 119, “…The ECJ has recently re-stated theposition it took in Windsurfing in the course <strong>of</strong> giving its judgement in thePhilips case. Although the court accepted that it maybe possible todemonstrate the acquisition <strong>of</strong> trade mark character during a period inwhich a party is the only supplier <strong>of</strong> the goods to the market, itVersion 1 (13 January 2006) Page 18 <strong>Intellectual</strong> <strong>Property</strong> <strong>Office</strong> <strong>of</strong> <strong>Singapore</strong>
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