If I took those words away, how would you make the examiner understand, and show her that your non-traditional mark is real? 

Introduction

What are trade marks? According to Singapore law, a trade mark, at its core, can be any sign which is capable of being represented graphically and capable of distinguishing the goods or services of one trader from that of another. Conventional trade marks will typically comprise words and/or figurative elements which fulfill these requirements. However, as businesses strive for competitive advantage in a crowded marketplace, many explore more creative and exotic ways to engage customers – and to claim a monopoly over these unconventional expressions by asserting trade mark rights.

Scope of protection

To what extent can such non-traditional marks be protected? Within the ASEAN region alone, prosecution regimes for non-traditional trade marks vary greatly. Singapore appears to be one of the most progressive, with a legal framework which recognises eligibility for protection for most types of non-traditional marks. 

Take “position marks” for example – these refer to trade marks consisting of the specific way in which specific features are placed or affixed to the goods, and are a recognised category of non-traditional marks in the EU. While not recognised specifically as a sui generis category of trade marks in Singapore, Singapore’s legal framework is broad enough to encompass them by depicting what would typically be figurative, coloured, or three-dimensional elements in relation to their specific positioning upon the goods. 

In contrast, in other ASEAN states like Cambodia, Indonesia, Laos, Myanmar, Thailand and Vietnam, it would appear that only very few types of non-traditional marks are accepted as being eligible for registration. Given that this area of law is still rather nascent in these territories, it is not surprising that there is no “clear-cut” position on the registrability of such marks. 

Obstacles to registration 

Eligibility for registration is one thing; but to actually attain successful registration of a non-traditional mark can be challenging in practice. 

In general, and as is the case in Singapore, the primary obstacle is the issue of distinctiveness. Under Singapore law, marks which are “devoid of any distinctive character” or which “designate a characteristic of the goods or services applied for” will lack the necessary inherent distinctiveness for registration. While it is possible to overcome a lack of inherent distinctiveness by demonstrating acquired distinctive character, this approach also presents its own challenges.

In addition, a sign comprising a shape may attract a separate bar to registration if the sign consists exclusively of a shape (a) which results from the nature of the goods themselves, (b) which is necessary to obtain a technical result, or (c) which gives substantial value to the goods.

Singapore’s stance

While our legal framework is accommodating, the practical examination stance is strict. 

The legal principles were enunciated by the Singapore Court of Appeal in Societe Des Produits Nestlé SA and another v Petra Foods Limited and another [2016] SGCA 64 (“Petra Foods”). While the case concerned 3-dimensional shape marks, the principles are likely to be applicable to all other types of non-traditional marks. 

Inherent distinctiveness 

For non-traditional marks to be registrable, the mark (be it a shape, a position, a colour or otherwise) must be capable of acting as a trade mark of the trader (as opposed to decorative, functional or informational), and being ‘relied on’ to identify the goods in question as originating from a particular source. This is ultimately a question of fact, with the main difficulty being that consumers are not in the habit of relying solely on these elements (i.e., the shape or colour of the products) as a reliable source identifier.

In the case of a shape mark, for example, it must, at the minimum, be a significant departure from any “common shape” used in the market, so as to allow an average consumer to immediately recognise that shape as “standing out from the crowd” and distinguishing the goods from those of other traders. In this regard, the competitive practices and the specific characteristics of the market concerned will be relevant, as the prevailing diversity (or lack thereof) in the marketplace could influence the notional expectations of the average consumer.

That said, a departure from the norms of the sector, without more, does not automatically imbue the mark with trade mark significance. “Uniqueness”, or “originality”, is not the same as distinctiveness. The test is not whether the shape is special or eye-catching, but whether the average consumer will rely on that shape as indicating trade origin. The mere fact that the shape is unusual and not used by other competitors is likely to be insufficient to satisfy the local courts or examination authorities. 

Acquiring distinctiveness through use?

The challenge is that the evidence of use must demonstrate that a significant proportion of consumers rely on the shape on its own to identify the source of the product.. 

This is a high threshold. Market recognition that the shape is associated with the applicant is not sufficient to establish acquired distinctiveness. This is even more so if the industry practice is to adopt variations of the shape in question, as this could suggest that consumers are “desensitised” to such shapes having trade mark character or significance.

Further, there may also be practical difficulties in finding persuasive evidence, as in reality, the use of the shape marks is often combined with other distinctive brand elements when marketed to the public. 

In practice, even as the local courts or examination authorities recognise that non-traditional marks are in principle eligible for registration, they tend to be wary of a non-traditional mark’s ability to meet the “reliance” threshold. In many of the cases where non-traditional marks have successfully secured registration, they tend to contain at least some other embellishment of a distinctive nature within the overall expression of the mark as a whole. Some examples of successful 3D shape mark registrations in Singapore include Longchamp’s well-loved Le Pliage bag “” and the classic Kinder Joy chocolate capsule “”, both of which contain some additional distinctive word or device element beyond the mere shape of the product.

Concluding thoughts

Given the general assessment stance, in practice there is often a need to displace the examiner’s default expectation that the consumer would perceive a non-traditional mark as a decorative embellishment; a marketing feature; a promotional message; an advertising expression; anything but a badge of origin in itself.

To address this, the applicant must be prepared to draw on the specific characteristics in the sector, coupled with the inherent nature and expression of the mark, in order to explain how these may influence and change the notional perspective of the relevant consumer. 

The road to registration is likely to be long and winding, but not impossible. Singapore still remains one of the most permissive and progressive jurisdictions which recognise the registrability of non-traditional marks. 

Given the likelihood of having to rely on acquired distinctiveness, brand owners would be well advised to ensure that their marketing strategies and campaigns are aligned so that the non traditional mark element acts as the source-identifieron its own. All these efforts and initiatives need to be well-documented and meticulously curated in order to withstand the examiner’s scrutiny when submitted as evidence in support of the mark’s acquired distinctiveness. 

Where a brand owner successfully secures registrations for non-traditional marks in Singapore, it is still strategically important to be mindful of the need to future-proof such marks from potential vulnerability to invalidation, or possibly even a non-use challenge – in particular, a brand owner must maintain a high degree of brand discipline and guard against careless or permissive use which fails to uphold that clear communication of trade mark character which is essential to the continued existence, longevity and enforceability of the non-traditional mark.