Trade mark laws are very important in protecting the products and intellectual properties of individuals and/or companies. However, if granted too freely, they can also be obstacles to legitimate competition. The Trade Mark law therefore seeks to maintain a proper balance.
Ferrero Rocher had applied to protect the following mark in Singapore:
They would ultimately fail to do so due to a variety of reasons. One of the grounds for refusing to register a trade mark relates to the failure of the applied-for mark to fulfill the essential function of a registered trade mark, which is to indicate the trade origin of the goods and/or services for which it is registered. It is in the public interest that the Register be kept free of trade marks that do not function as indicators of trade origin.
Generally, the public will usually rely on logos as a an indication of the trade origin of the product, not the shape and packaging of it. But through extensive advertising, promotion and sale of products bearing a distinctive trade mark such as a word, that shape and packaging may sometimes become recognised even without that word mark.
The primary focus of the decision was whether the Application Mark had in fact acquired its own uniqueness. In other words, the applicant (Ferrero) had to prove that the shape of the Application Mark was uniquely identifiable as “Ferrero Rocher”.
What is clear from the Applicant’s evidence is that there have been very extensive sales to and in Singapore of Ferrero Rocher chocolate products, although such evidence also shows that the overwhelming majority of such sales were in boxes that featured prominently the branding “Ferrero Rocher” on the outside as well as on each of the individually-wrapped pralines. In all of the promotional / point of sale material where a product can be discerned, the brand Ferrero Rocher is prominently featured.
The IP Adjudicator observed that it was far more likely that consumers were making the decision to purchase Ferrero Rocher products due to the strength of the company’s brand and logo, which is featured heavily on the packaging of their product. The IP Adjudicator also noted that without said brand strength, the Application Mark would be considered too generic.
The Applicant also had a survey conducted, in which 400 people in 24 locations around Singapore were asked “Do you know this product?” when shown a picture of the Application Mark. The IP Adjudicator considered that the survey results fail to show that the Application Mark with the absence of the Ferrero Rocher brand is able to be unique enough to be protected by trade mark law.
As such, the IP Adjudicator maintained the objection that the Application Mark is devoid of any distinctive character and could not be protected in Singapore.
These kinds of cases are important for any business to be aware of, especially SMEs. SMEs are often the hotbed for new innovations and ideas;and trade marks are one of the most commonly used intellectual property tools they can use to protect themselves and their products.