IPOS rejects Ferrero Rocher 3D mark
Italian chocolatier Ferrero’s plans have been spoiled after it failed to register a 3D trademark for its popular chocolate ‘Ferrero Rocher’ before the Intellectual Property Office of Singapore (IPOS).
Today, December 19, IPOS announced the rejection, stating that Ferrero had “ultimately failed to do so due to the lack of distinctiveness of the application mark as a trademark on its own”.
Ferrero had sought to register the trademark, which consists of a gold-wrapped ball of chocolate sitting within a brown, pleated paper cup, in 2013. The trademark also features a blank white sticker on top of the gold ball.
However, IPOS (in a decision handed down in late last week) has concluded that “recognition and association are not sufficient”, citing the Singapore Court of Appeal’s decision in Société des Produits Nestlé v Petra Foods.
In that case, Nestlé argued that the two-finger and four-finger shape of KitKat chocolate bars were infringed by Petra’s Take-It products, which also feature two-finger and four-finger chocolate wafer bars.
In November 2017, the Singapore Court of Appeal dismissed Nestlé’s lawsuit and found that the distinctive character that must be present is not just any distinctiveness, such as might result from an “unusual, new or visually distinctive” shape, but the appearance of the mark must convey indication of origin.
In the Ferrero case, IPOS said that Ferrero hadn’t established that the purchasing public would rely solely on the application mark, without the trademark name ‘Ferrero Rocher’, for the trade origin of the goods.
Although there have been “very extensive sales” to and in Singapore of Ferrero Rocher chocolates, said the IPOS, the overwhelming majority of these sales were in boxes that prominently featured the word mark ‘Ferrero Rocher’ on the outside as well as on each of the individually-wrapped pralines.
Ferrero also produced a survey which asked around 400 people in 24 locations around Singapore were asked “Do you know this product?” when shown a picture of the application mark, to which 360 answered yes.
“It seems highly unlikely that the recording of the responses was verbatim as none of those interviewed seem to have stumbled, mis-stated or garbled the names Ferrero or Ferrero Rocher; nor are the instructions given to the interviewers provided,” said IPOS.
The IP adjudicator considered that the survey results failed to show that the Ferrero’s applied-for trademark functions as an indication of trade origin absent the distinctive word mark.
“However, notwithstanding this recognition, such a common shape and colour is clearly not distinctive on its own as an indication of trade origin for chocolates and the like, and therefore would be extremely difficult, if not impossible, to register as a trademark,” said IPOS.
The adjudicator went on to add that none of the features add anything to the distinctiveness of the application mark as a whole because the average consumer would view them as merely functional or decorative elements.
In refusing to register the trademark, IPOS said that registration of packaging as a trademark doesn’t automatically follow from the extensive promotion, advertising and sale of products under a distinctive word mark.
“If such ‘sleight of hand or trick’ … were permitted, the application mark could then be exploited to frighten off other traders who are legitimately using one or more of the dominant elements of that packaging (the gold spherical shape, the paper cup or the white oval sticker) for their own chocolate products,” it concluded.
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