Kraft Foods Schweiz Holding GmbH v. Pendaftar Cap Dagangan, The High Court of Malaya at Kuala Lampur [Commercial Division] (Case No. 24IP-49-12/2015, August 15, 2016)
Until recently, three dimensional (“3D”) shape marks were rarely afforded protection as trademarks under governing Malaysian practice. However, a recent case from the IP court (Case No. 24IP-49-12/2015, August 15, 2016) has taken a more liberal approach, potentially changing the landscape for 3D marks in Malaysia by holding that the definition of “mark” under the governing statute can include a 3D shape.
The plaintiff, Kraft Foods Schweiz Holding GmbH (“Kraft Foods”), is a Swiss company that manufactures confectionary, food, and beverages, including the “Toblerone” brand of chocolates, and exports these products worldwide. Toblerone chocolates are in the shape of a prism, representing the Swiss Alps mountain range. Kraft Foods owns various two-dimensional registrations for the prism design around the world, including in Malaysia, and in June 2012 applied to register a 3D version of the Toblerone chocolate bar, a prism-shaped mark in a reddish-brown color (), described as “Toblerone Chocolate Teeth 3D In Colour” for chocolate and related goods in Class 30 (the “Proposed Trademark”).
The Registrar of Trade Marks (“Registrar”) objected to the application on the basis that (1) the mark lacked distinctiveness, and (2) the mark was not capable of distinguishing Kraft Foods’ goods in the course of trade. Kraft Foods filed arguments in response, but the Registrar maintained its objection on the basis that, inter alia, the application did not fall within the definition of “mark” or “trade mark” in Section 3(1) of the Trade Marks Act 1976 (“TMA”) because the definition of “mark” does not include a “shape.”
Kraft Foods appealed the unfavorable decision, and the High Court of Malaya (the “Court”) considered the registrability of the mark on the assumption that Kraft Foods was not time-barred under local practice, despite the fact that the appeal was filed after the extended deadline to do so.
On appeal, Kraft Foods argued that the Court could rely on the definition of “mark” under the Agreement on Trade Related Aspects of Intellectual Property Rights 1194 (“TRIPS Agreement”), namely, a “sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trade mark”, to find that the Proposed Trademark was indeed registerable. However, the Court held that it was improper to rely on the TRIPS Agreement because the Malaysian Parliament had not passed legislation to give it legal effect (despite Malaysia being a signatory to the agreement).
The Court then addressed whether the definition of “mark” under Section 3(1) of the TMA (which “includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof”) includes a 3D shape. The Court relied on a UK case, Smith Kline and French Laboratories Ltd v Sterling-Winthrop Group Ltd  2 All ER 578, which allowed for the registration of 3D marks in distinctive color combinations in the pharmaceutical field, and concluded that a 3D representation can fall under the definition of “mark” in Section 3(1) of the Act. Moreover, the Court found that not only may a 3D mark be considered a “device,” as the term is used in the TMA, but the items defining a “mark” under the TMA are not intended to be exhaustive because of the use of the term “includes.”
In its arguments on appeal, the Registrar relied on a decision of the House of Lords, Coca-Cola Trade Marks  RPC 421, which refused applications to register the shape of a Coca-Cola bottle as a trademark on the grounds that a distinctive shape was an insufficient basis for trademark registration. However, the Court here declined to follow the Coca-Cola decision. Rather, the Court followed the reasoning of Smith Kline and held that (i) 3D shape marks fall within the meaning of “mark” in Section 3(1) of the TMA, and (ii) 3D shape marks may be registered as a trademark if the following conditions are met: (a) the applicant is the bona fide proprietor of the 3D mark; (b) the 3D shape mark is distinctive of the applicant’s goods; and (c) the registration of the shape mark is not prohibited by other provisions of the TMA (e.g., the mark does not cause consumer confusion or public deception).
Despite its willingness to find that a 3D mark falls under the definition of “mark” under governing law, the Court ultimately concluded that Kraft’s Proposed Trademark would not be considered a “trade mark” because it fails to indicate a connection in the course of trade with Kraft Foods’ goods and Kraft Foods itself, nor does it have a feature capable of distinguishing Kraft’s goods from those of others, and therefore lacks inherent distinctiveness. In support of this holding, the Court concluded that other traders are likely, in their course of business and without any bad faith, to want to use the same mark, or something closely similar thereto, in connection with their own goods. Further, Kraft Foods did not provide sufficient use of the mark to show that it had acquired distinctiveness because it had only used the mark with the “TOBLERONE” name in connection with the goods, and did not provide evidence that the mark had been used without TOBLERONE. The Court therefore upheld the Registrar’s decision and maintained the rejection of Kraft Foods’ application.
While the Court ultimately did not allow for the registration of the 3D shape mark at issue here, the door appears open to the possibility of registering 3D shape marks in the future, where the applicant is able to show that the mark is distinctive and capable of distinguishing the applicant’s goods in the course of trade.