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What is the lowest level of distinctiveness?

The SG trademark manual for 3D trademarks says the following:

"7.2 Uniqueness is not the same as distinctiveness

The test for distinctiveness of a mark is whether the average consumer will assume that all goods that come in that shape belong to the same undertaking, and not whether the shape is “unusual”, “memorable”, “recognisable on being seen a second time”, eye catching or highly decorative per se.

To illustrate, the shapes of decorative items such as ornaments or jewellery are unlikely to have inherent distinctive character and be acceptable prima facie because it is normal within these trades to provide unusual and imaginative creations for jewellery. Such creations may not automatically perform the function as an identifier of source."


I do not understand.

the lowest level of distinctiveness is defined in S7(1)(a) Trademarks Act:
"7.—(1) The following shall not be registered:
(a) signs which do not satisfy the definition of a trade mark in section 2(1);"

S2(1) Trademarks Act says:
"´trade mark´ means any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person;"

In other words, there are objects in this world that are not understood as trademarks when being used in trade.

Imagine a random stone that you have found at a river. Put that random stone on a table in a shop. Would anyone think that this stone is a trademark for tables? The answer is "In general, no". This is a case of S7(1)(a).

Now imagine a chain of furniture retail outlets, and every piece of furniture in this shop has a river stone on it. Is your perception different in that case or not? The answer is "yes", it is a trademark.

Now put that into criteria and evaluate the UK High Court example of the Yakult bottle again,

(Yakult (Bottle Shape) Trade Mark Application, Kabushiki Kaisha Yakult Honsha v
Registrar of Trade Marks [2001] R.P.C. 39)

see the attached picture




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it is like the NZ case Fredco Trading Limited v Miller (CA20/05), about the registration of the shape of a plastic vine tie used in kiwi fruit orchards, see here

"In the early 1980s the owner of the mark, Robert Peter Miller, began selling the Klipon vine tie, a plastic tie used for fixing kiwi fruit vines to support wires. Over 1 billion ties have since been sold. Miller’s registered design and patent protection for the vine tie expired in 1995 and 1999 respectively.

In 2002 Fredco Trading Limited started selling its own identical vine ties, at which time Miller applied to register the shape of his vine tie as a trademark. Initially, the application was rejected on the basis that the shape was not distinctive of the goods, and as such the shape could not function as a trademark. However, evidence was filed to prove that the shape of the tie had acquired distinctiveness through use and the trademark was registered with effect from July 25 2002.

In August 2002 Miller commenced proceedings against Fredco for, among other things, trademark infringement. Fredco responded by applying to the High Court to invalidate the Klipon shape mark registration. Fredco alleged that, as the shape of the tie was primarily functional, it lacked distinctive character and therefore should not have been registered. The court held(1) that the shape of the tie satisfied the criteria for registration and rejected Fredco’s application. Fredco appealed the decision to the Court of Appeal.

The appeal concerned mainly the application of Section 18 of the Trademarks Act 2002, which provides that signs (including shapes) which are not distinctive are not registrable, although such signs are registrable as trademarks if they have acquired a distinctive character through use. However, unlike equivalent legislation in many other countries, such as the United Kingdom and the United States, the act does not prohibit the registration of functional shapes per se.

When the legislation was originally drafted, it included a prohibition against the registration of functional shapes identical to that in UK legislation. However, this was removed from subsequent drafts following advice from the select committee considering the draft legislation that such prohibition might unnecessarily restrict the registration of marks which were distinctive. The committee also noted the difficulties encountered by the judiciary in applying these prohibitions in other jurisdictions.

The main issues which the court considered were:

  • whether a functional mark can be a trademark;
  • whether goods themselves can be a mark;
  • whether the High Court had erred in finding that the shape of the tie had acquired trademark significance through use; and
  • whether the Klipon mark was a 'limping' mark (ie, supported by the Klipon name).

Fredco argued that (i) the function of a trademark is to convey information about the origin of goods, and (ii) although it was theoretically possible for the vine tie to have acquired distinctive character through use, this had not occured because, according to Fredco, the shape of the tie was purely functional and thus could not act as a badge of origin, regardless of the extent of use. Fredco argued that to claim otherwise would confer on the owner of a shape trademark in the shape of the goods a perpetual monopoly over the functional features of such goods.

Miller argued that, in the absence of a statutory bar to the registration of functional shapes (when such bar had clearly been considered and rejected by the legislature), the fact that a shape may be functional should not be a bar to registration. In order for a functional shape to be registrable, the shape need only have acquired a secondary meaning (ie, by functioning as a badge of origin and/or quality and hence as a trademark). The court did not consider this point, as the High Court had found that the mark was largely rather than purely functional. The Court of Appeal also pointed out that the attribution of a registration to the Klipon shape would not stop others from using a vine tie of any sort, as there are other ways of achieving the same functionality.

The court then considered whether it is possible for goods themselves to be a mark. Fredco argued that where the sign is the shape of the goods themselves, the mark cannot convey information about the origin of the goods. If the shape is removed, there is nothing left to comprise a mark. However, Miller argued that although the shape of goods themselves may not always be inherently distinctive, there is no reason why it cannot acquire distinctiveness through use. Hence, in cases where the shape may be of a mixed functional and aesthetic nature, the issue is simply whether the shape of the goods is distinctive in fact. Referring to Kenman Kandy Australia Pty Limited v Registrar of Trademarks (2002) 56 IPR 30, the court agreed with Miller, holding that the goods can be the mark.

Fredco then argued that the High Court had been wrong to find that the shape of the vine tie had acquired distinctive character through use, as the evidence relied on by Miller showed only product recognition, as distinct from brand recognition. Fredco argued that this is not enough to show that a mark has acquired distinctive character. In response, Miller argued that there was clear evidence to show that consumers relied on the shape of vine tie to identify the source of the product. The Court of Appeal agreed, stating that:

The appellant argues that the evidence shows that the only recognition here is of the product. While the evidence is limited, we consider it does go beyond that. There is an identification by shape and a link to the origin... [I]f consumers use the shape of the vine to identify it and no other features, the shape has brand significance.

The Court of Appeal went on to consider whether the High Court had been correct in finding that the vine tie shape was not a limping mark. Referring to the decision of the European Court of Justice (ECJ) in Societé des Produits Nestlé SA v Mars UK Ltd C-353/03, the court noted that a mark can acquire distinctiveness even if used as part of, or in conjunction with, another mark. The court agreed with the High Court’s finding that consumers used the shape of the vine tie to relate the ties back to Klipon's brand, not the reverse. Therefore, it held that the shape was not a limping mark."

In short words:

  • functional signs, such as product shapes, may be registrable as trademarks if the applicant can show that the shape has acquired distinctiveness through use
  • the ECJ in Nestlé that any use which leads to distinctiveness is use as a trademark is also applicable under Common Law.  If a sign is distinctive at the date of application, how it acquired that distinctiveness is irrelevant.