Societe Des Produits Nestlé SA and another v Petra Foods Ltd and another

• Court: High Court (Singapore)
• Judge: Chan Seng Onn J
• Hearing Date: 08 April 2014,08 July 2014,09 April 2014,15 April 2014,10 April 2014
• Docket Number: Suit No 1081 of 2012
• Published date: 09 December 2016
• Plaintiff Counsel: Arthur Yap and Sheena Jacob (ATMD Bird & Bird LLP)
• Defendant Counsel: Gill Dedar Singh and Gabriel Ong (Drew & Napier LLC)
• Subject Matter: Copyright,Ownership,Defence,Industrial designs,Trade Marks and Trade Names,Grounds for refusal of registration,Registration criteria,Distinctiveness,Revocation,Well-known trade mark

Chan Seng Onn J:

This case deals with claims in trade mark and copyright infringement. A single thread runs through the numerous and varied issues that have been raised by the parties, and that is the question of when one trader may legitimately restrain another trader from marketing goods of a similar shape to its products by asserting intellectual property protection in the shapes of the products themselves. The shapes in question are those comprising the familiar Kit Kat chocolate coated wafer bars, which have been the subject of much litigation throughout the world.

The parties

The plaintiffs belong to the Nestlé group of companies. The first plaintiff, Societe Des Produits Nestlé SA, is a public company incorporated in Switzerland. The second plaintiff, Nestle Singapore (Pte) Ltd, is a company incorporated in Singapore. The plaintiffs are the proprietors of the chocolate covered wafer products under the KIT KAT trade mark.

The defendants belong to the Petra Foods group of companies. The first defendant, Petra Foods Limited, is a public company incorporated in Singapore. It is the parent company of the second defendant, Delfi Singapore Pte Ltd, as well as PT Perusahaan Industri Ceres (“PT Ceres”), a company incorporated in Indonesia, and Delfi Chocolate Manufacturing S.A (“Delfi SA”), a company incorporated in Switzerland.

The second defendant is the importer and distributor of a chocolate product under the trade mark “Take-It” or “Delfi Take-It”. The “Take-It” product is manufactured by PT Ceres under licence from Delfi SA.

The claims and counterclaim

The first plaintiff is the registered owner of the following trade marks in Singapore:¹

No.	Registered Mark	Class / Specification of Goods	Description
1.	T0000002A (“the Two Fingers Shape”) Mark Clause: Proceeding because of acquired distinctiveness through use since 1970s. Date of Registration: 3 January 2000	Class 30: Chocolate confectionery being chocolate coated confectionery blocks or bars and chocolate wafer biscuits (“the Goods”)	Description of particular features: The trade mark consists of the three-dimensional shape of the goods, being two bars attached to one another by a thin base as shown in the representation on the form of application. Device Description: three-dimensional, chocolate three-dimensional, bar chocolate bar
2.	T0000003Z (“the Four Fingers Shape”) Mark Clause: Proceeding because of acquired distinctiveness through use since 1970s. Date of Registration: 3 January 2000	Class 30: The Goods	Description of particular features: The trade mark consists of the three-dimensional shape of the goods, being four bars attached to one another by a thin base as shown in the representation on the form of application. Device Description: three-dimensional, chocolate three- dimensional, bar chocolate bar

I will refer to the Two Fingers Shape and the Four Fingers Shape collectively as “the Registered Shapes”.

The first plaintiff also claims to be the owner of the following unregistered trade mark (“the Two Fingers Composite Mark”):

Finally, the first plaintiff also asserts that it is the owner of the following “artistic work” which it claims was created in or about the late 1990s (“the Artistic Work”):

The plaintiffs do not in their statement of claim specify what type of “artistic work” the Artistic Work is. I assume that they mean that the Artistic Work is a species of drawing or painting. The defendants do not dispute that it is an “artistic work”.

The plaintiffs allege that the shape and packaging of the defendants’ Take-It products infringe their intellectual property rights. I set out in the table below the allegedly infringing goods:

Description	Take-It (Two fingers)	Take-It (Four fingers)
Unwrapped	(“2-Fingers Take-It”)	(“4-Fingers Take-It”)
Packaging (actual)
Packaging (with all signs removed)	(“Representation of the 2-Fingers Take-It”)	(“Representation of the 4-Fingers Take-It”)

The second defendant does not dispute that it imported and sold the 2-Fingers Take-It in Singapore from at least August 2010 and the 4-Fingers Take-It from at least April 2012.²

The plaintiffs’ claims may be summarised as follows:³ Trade mark infringement (product) The 2-Fingers Take-It infringes the Two Fingers Shape under ss 27(1) and/or 27(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”). The 4-Fingers Take-It infringes the Four Fingers Shape under ss 27(1) and/or 27(2)(b) of the TMA. Trade mark infringement (packaging) The Representation of the 2-Fingers Take-It infringes the Two Fingers Shape under s 27(2)(b) of the TMA. The Representation of the 4-Fingers Take-It infringes the Four Fingers Shape under s 27(2)(b) of the TMA. Well-known trade marks (product) The Two Fingers Shape is well known and/or well known to the public at large in Singapore, and the defendants should be restrained by injunction from using the 2-Fingers Take-It under ss 55(2), 55(3)(a) and/or 55(3)(b) of the TMA. The Four Fingers Shape is well known and/or well known to the public at large in Singapore, and the defendants should be restrained by injunction from using the 4-Fingers Take-It under ss 55(2), 55(3)(a) and/or 55(3)(b) of the TMA. Well known trade marks (packaging) The Two Fingers Shape is well known and/or well known to the public at large in Singapore, and the defendants should be restrained by injunction from using the Representation of the 2-Fingers Take-It under ss 55(2), 55(3)(a) and/or 55(3)(b) of the TMA. The Four Fingers Shape is well known and/or well known to the public at large in Singapore, and that the defendants should be restrained by injunction from using the Representation of the 4-Fingers Take-It under ss 55(2), 55(3)(a) and/or 55(3)(b) of the TMA. The Two Fingers Composite Mark is well known and/or well known to the public at large in Singapore and the defendants should be restrained by injunction from using the Representation of the 2-Fingers Take-It under ss 55(2), 55(3)(a) and/or 55(3)(b) of the TMA. Copyright infringement (packaging) The Representation of the 2-Fingers Take-It infringes the Artistic Work under ss 32 and/or 33 of the Copyright Act (Cap 63, 2006 Rev Ed) (“Copyright Act”).

The defendants’ counterclaim may be summarised as follows: The Two Fingers Shape and Four Fingers Shape ought to be invalidated and/or revoked on the following grounds that the Two Fingers Shape and the Four Fingers Shape:⁴ were registered in breach of s 7(1)(a) of the TMA in that they are not trade marks within the meaning of s 2(1) of the TMA, being not capable of distinguishing the goods for which they were registered; were registered in breach of s 7(1)(b) of the TM in that they are devoid of any distinctive character; should be revoked pursuant to s 22(1)(a) of the TMA as the marks were not put to genuine use in the course of trade in Singapore within five years following the date of completion of registration; should be revoked pursuant to s 22(1)(b) of the TMA as use of the marks was suspended for an uninterrupted period of five years; were registered in breach of s 7(3)(a) of the TMA in that each of them consists exclusively of a shape which results from the nature of the goods themselves; were registered in breach of s 7(3)(b) of the TMA in that each of them consists exclusively of a shape which is necessary to obtain a technical result; and were registered in breach of s 7(3)(c) of the TMA in that each of them consists exclusively of a shape which gives substantial value to goods. The plaintiffs’ threats of legal proceedings for infringement of a registered trade mark were groundless threats of infringement proceedings under s 35(2) of the TMA.

Background

The Kit Kat products which bear the Registered Shapes are essentially moulded chocolate wafer confectionaries.⁵ According to Mr Clive Barnes (“Mr Barnes”), the head of communication and information services for Nestle’s global research and development activities,⁶ the four fingers Kit Kat product was originally launched as Rowntrees Chocolate Crisp in 1935,⁷ which was rebranded as Kit Kat in 1937.⁸ It bore the Four Fingers Shape right from the beginning and it remains unchanged till today.⁹ The two fingers version was subsequently launched in 1963.¹⁰ Undoubtedly, the first plaintiff has been marketing the Kit Kat products for a very long time.

Mr Chuang Tiong Liep (“Mr Chuang”), who is an executive director of the first defendant and a director of the second defendant, said that the first defendant and its subsidiaries (including the second defendant) also have a long history of selling moulded chocolate wafers and biscuits.¹¹ He said that one of the subsidiaries, PT Ceres, first manufactured a moulded chocolate wafer comprising of a single wafer coated with chocolate under the trade mark PATSY in Indonesia as early as 1951.¹²

Subsequently, PT Ceres decided to develop a cheaper and smaller confectionary to cater to the Indonesian market.¹³ As a result, in around 1986 to 1987, PT Ceres manufactured and sold moulded chocolate wafers comprising of two or three “sticks” of wafers joined at the base with chocolate. These were sold in Indonesia, Singapore and Dubai under the WINDMOLEN mark. The Windmolen wafers were made using compound chocolate, which is different from real chocolate in that the former uses vegetable fat in place of cocoa butter.¹⁴ These Windmolen wafers were eventually phased out as they did not do well in the Indonesian market.¹⁵

According to Mr Chuang, the experience in producing, distributing and selling the Windmolen wafers eventually led to the development of the Take-It products, which include the 2-Fingers Take-It and 4-Fingers Take-It moulded...