In practice, the Malaysian Registry of Trade Marks often rejects applications to register three dimensional shapes as trade mark (“3D marks”). However, this position may change in light of the obiter statements made by the IP Court Judge in a recent decision in Kraft Foods Schweiz Holding GmBH v. Pendaftar Cap Dagangan.

Background

In Kraft Foods Schweiz Holding GmBH, the Plaintiff applied to register a 3 dimensional prism-shaped mark “” in reddish brown colour (as illustrated) described as “Toblerone Chocolate Teeth 3D In Colour” for goods in Class 30 (“Proposed Trade Mark”). The application was objected to by the Registrar of Trade Marks (“Registrar”) on the grounds that the Proposed Trade Mark is not distinctive and that it direct reference to the character or quality of the goods.

After reading written arguments filed by the Plaintiff, the Registrar maintained the objection. Further, the Registrar stated in his grounds of decision that the Proposed Trade Mark did not fall within the definitions of “mark” and “trade mark” under section 3(1) of the Trade Marks Act 1976 (“TMA”). The Plaintiff then filed an appeal to the IP Court against the Registrar’s decision.

The appeal was dismissed on the ground that the appeal was filed outside the prescribed statutory period and that there the Plaintiff did not file any application to extend time to file the appeal.

Nevertheless, the IP Court went on to consider the registrability of the Proposed Trade Mark.

Whether a 3D shape falls within the definition of a mark under the TMA

Under section 3(1) TMA, the definition of a “mark” “includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof”. It does not expressly include “shape”.

The Judge took the view that 3D marks would fall within the definition of “mark” in section 3(1) TMA for the following reasons:

• In Smith Kline and French Laboratories Ltd v Sterling-Winthrop Group Ltd [1975] 2 All ER 578, the House of Lords construed the definitions of “mark” and “trade mark” under the UK Trade Marks Act 1938 and Lord Diplock opined that a “mark” “must be something that can be represented visually and may be something that can be applied to the surface of the goods (‘use upon’) or incorporated in the structure of the goods (‘use in relation thereto’).” Lord Diplock further opined that “there is nothing that requires one to exclude from the definition of ‘trade mark’ a mark which covers the whole of the visible surface of the goods to which it is applied.” Lord Diplock further explained that such a mark is as capable of indicating a connection in the course of trade between the goods and the proprietor of the mark as it would have been if it had only covered half or three-quarters of the visible surface. The IP Court was inclined to follow the decision in Smith Kline and French Laboratories Ltd as the definition of a “mark” and “trade mark” under the TMA is the same as that in the UK Trade Marks Act 1938.
• A 3D mark may fall under the definition of a “device” in light of the dictionary meaning for “device”.
• The definition of “mark” in section 3(1) TMA is not intended to be exhaustive or restrictive by reason of the word “includes”.

The Judge also considered the decision of the House of Lords in Coca-Cola Trade Marks [1986] RPC 421 (cited by the Registrar) where applications to register a bottle/container were refused, but declined to follow that decision for the following reasons:

• There is nothing in section 3(1) TMA which excludes 3D shape marks from falling into the definition of a “mark”.
• A 3D shape mark may be registered as a trade mark upon the fulfilment of all the following conditions:

1. The applicant is the bona fide proprietor of the 3D shape mark;
2. The 3D shape mark is distinctive of the applicant’s goods; and
3. The registration of the 3D shape mark” does not cause confusion or deception to the public and is not prohibited by the TMA.

Although the Proposed Trade Mark falls within the definition of a “mark”, the IP Court found that it is not a “trade mark” within the meaning of TMA as it does not indicate a connection in the course of trade between the Plaintiff’s goods and the Plaintiff and hence not inherently distinctive.

The IP Court also found that the Plaintiff had only used the Proposed Trade Mark with the “TOBLERONE” name on or in relation to the Plaintiff’s goods and there is no evidence that the Plaintiff had used the Proposed Trade Mark without the “TOBLERONE” name. Therefore, there is no evidence that the Proposed Trade Mark has acquired factual distinctiveness at the date of the application. This appears to be inconsistent with the position taken by the English courts the European Court of Justice (ECJ) where it is not necessary for there to be use of the mark independently in order for the mark to acquire a distinctive character, and use of a mark as part of a composite mark or in conjunction with another mark is capable of constituting genuine use. As the Judge’s statement is obiter, and the English and ECJ decisions on this point may not have been brought to the attention of the Judge, this point is not binding and remains open to further arguments in future cases.

Implications

The IP Court has shown a willingness to provide a liberal interpretation to the definition of “mark”, and there is certainly room to argue for the registration of 3D shape marks.

However, as the statements were obiter, the jury is still out on whether 3D Marks can be registered as trade marks. It also uncertain whether the Registry will adopt the liberal interpretation taken by the IP Court and accept 3D shape marks for registration.

A more certain route would be to amend the definition of a “mark” under the TMA to expressly include shape marks. This may take place sometime in 2017 in view of the imminent implementation of the Madrid Protocol and Malaysia’s obligations under the Trade-Pacific Partnership Agreement, and we anticipate that the definition of a “mark” under the TMA will be amended to expressly include shape marks and other non-traditional marks.

If you have any questions on the content of this Client Alert or wish to discuss anything about this matter in further detail, please feel free to contact: Ong Boo Seng (Partner) and Stanley Lee (Associate).

This alert is for general information only and is not a substitute for legal advice.