Societe Des Produits Nestlé SA and another v Petra Foods Limited and another
Jurisdiction | Singapore |
Judge | Sundaresh Menon CJ |
Judgment Date | 24 November 2016 |
Neutral Citation | [2016] SGCA 64 |
Plaintiff Counsel | Alvin Yeo SC and Chen Xinping (instructed), Sheena Jacob and Wang Zheng Just (Bird & Bird ATMD LLP) |
Docket Number | Civil Appeal No 200 of 2014 |
Date | 24 November 2016 |
Hearing Date | 31 July 2015,10 February 2016 |
Subject Matter | Revocation,Well-known trade mark,Registration criteria,Trade Marks and Trade Names,Grounds for refusal of registration,Distinctiveness |
Year | 2016 |
Defendant Counsel | Davinder Singh SC, Gill Dedar Singh and Gabriel Ong (Drew & Napier LLC),Prof Ng-Loy Wee Loon SC (Hon Caus) as amica curiae. |
Court | Court of Appeal (Singapore) |
Citation | [2016] SGCA 64 |
Published date | 14 January 2017 |
The law has tended to view attempts to obtain protection over three-dimensional marks (also referred to as “shape marks” in this judgment) with some suspicion. It was once observed that a trade mark must be distinct from the product to which it is applied; or, to put it another way, a product cannot be a mark of itself:
In
The material facts are set out in detail in the Judgment and it is not necessary for us to repeat them in their entirety. We confine ourselves instead to the more important facts that are pertinent to the issues raised in this appeal.
The partiesThe appellants belong to the Nestlé group of companies and their chocolate-covered wafer products are distributed under the KIT KAT trade mark. The first appellant, Societe des Produits Nestlé SA, is a public company incorporated in Switzerland and the second appellant, Nestlé Singapore (Pte) Ltd, is a company incorporated in Singapore.
The respondents belong to the Petra Foods group of companies and are both incorporated in Singapore. The first respondent, Petra Foods Limited, is the parent company of the second respondent, Delfi Singapore Pte Ltd, which is the importer and distributor of a chocolate product distributed under the TAKE-IT and DELFI TAKE-IT trade marks.
The trade marks in issueThe first appellant is the registered owner of trade marks of the Two-Finger Shape and the Four-Finger Shape in Singapore. We will hereafter refer to the trade marks of these two shapes as, respectively, “the Two-Finger Mark” and “the Four-Finger Mark”. These two shape marks (collectively, “the Registered Shapes”) are as follows:
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For completeness, the first appellant also claims to own the following unregistered trade mark, although it does not feature in this appeal:
The appellants’ products are essentially moulded chocolate wafer confectioneries. Products bearing the Registered Shapes have been sold in Singapore since the 1950s. The four-finger Kit Kat product was launched as Rowntrees Chocolate Crisp in 1935, and was subsequently rebranded as Kit Kat in 1937. The two-finger Kit Kat product was launched in 1963. The popularity of these products is clear from the quantity sold in Singapore between 2003 and 2010, which is estimated to be more than 2.4m kg.
The respondents appear to likewise have a long history of selling moulded chocolate wafers and biscuits. According to the respondents, one of the first respondent’s subsidiaries, PT Ceres, first manufactured a moulded chocolate wafer comprising a single chocolate-coated wafer under the trade mark PATSY in Indonesia in 1951. Sometime around 1986 to 1987, PT Ceres manufactured and sold moulded chocolate wafers comprising two or three sticks of wafer joined at the base by chocolate. These were sold in Indonesia, Singapore and Dubai under the WINDMOLEN mark. Subsequently, the respondents developed a new product line consisting of two-finger and four-finger Take-It products. Like Kit Kat products, these are also moulded chocolate wafer products.
The resemblance between the Take-It and Kit Kat products is evident. The Take-It products, when unwrapped, take the following forms:
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In the proceedings below, the appellants pursued the following claims against the respondents:
In response to the appellants’ trade mark infringement claims, the respondents counterclaimed under s 35(2) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”) for groundless threats of infringement proceedings. They also sought the invalidation and/or revocation of the registration of the Registered Shapes on the grounds that:
In the court below, the Judge dealt first with the respondents’ counterclaim for the invalidation of the Registered Shapes’ registration since the appellants’ claims for trade mark infringement would necessarily fail if the appellants had no valid legal rights to begin with. The Judge allowed this counterclaim on the basis that the Registered Shapes had been registered in breach of ss 7(1)(
In respect of s 7(1)(
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...(2020) 137 SALJ 528. [13] Ibid 535-536. [14] Beecham para 24 (emphasis added.) [15] Societe des Produits Nestle SA v Petra Foods Ltd [2016] SGCA 64. [16] Ibid para [17] Societe Des Produits Nestle SA and Another v International Foodstuffs Co and Others [2014] ZASCA 187; [2015] 1 All SA 492 ......
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Dart Industries Inc and Another v Botle Buhle Brands (Pty) Ltd and Another
...(2020) 137 SALJ 528. [13] Id at 535 – 6. [14] Beecham para 24 (emphasis added). [15] Société des Produits Nestlé SA v Petra Foods Ltd [2016] SGCA 64. [16] Id para [17] Société des Produits Nestlé SA v International Foodstuffs Co and Others [2015] 1 All SA 492 (SCA) ([2014] ZASCA 187) (Nestl......
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