In Colgate-Palmolive Company (Colgate) v The Procter & Gamble Company (P&G), P&G challenged Colgate's application to register a two-dimensional device representing a slug of toothpaste comprising green, white and blue strips in a sandwich appearance for the company's dentifrices (which include paste, gel or powder for use in oral hygiene) in class 3. P&G raised three-dimensional mark objections against Colgate's application and also argued:
- It was not a trade mark because it was merely a device of a slug of toothpaste which was not visible until the tube was pressed and incapable of distinguishing Colgate's goods because the consumer could not see the toothpaste at the time of purchase. Further, the device of a slug of paste was commonly used in the trade; and
- It consisted exclusively of the shape that resulted from the nature of the goods that is toothpaste.
Despite Colgate's efforts, the registrar allowed the registration. The response of the registrar to the grounds raised by P&G are summarised as follows:
- The application related to a two-dimensional graphic representation which may be used on packaging as a visible sign. The registrar felt that even though slug devices were common, the colour limitation and the specific representation applied for, amounted to a device which is capable of distinguishing P&G's goods from others; and
- The mark did not relate to a three-dimensional shape but a two-dimensional shape.
It should be noted that Colgate failed to register a similar series of two-dimensional and three-dimensional versions of slug marks and their colour variations in the UK. Relying on Lord Justice Jacob's statements in Philips v Remington (which considered Philips' attempt to register a two-dimensional representation of a three-headed faceplate of their rotary shaver), it was held in the UK that no distinction should be drawn between two-dimensional and three-dimensional trade marks. Despite the colour claim in the marks, "the features are likely to be seen as the arrangement of the product itself, mere decoration or perhaps even as indicating the active ingredients in the toothpaste" (Colgate-Palmolive Co's Trade Mark Application [2002]).
The views in Singapore and the UK appear divergent. In particular, the Singapore registrar's drawing of a line between the registrability of two-dimensional shapes and three-dimensional shapes, though convenient in this case, seems to draw a contrast with the UK position that there should be no distinction between two-dimensional and three-dimensional trade marks. Until the situation is made clearer by later decisions, trade mark owners seeking registration for their three-dimensional marks in Singapore may wish to consider registering a two-dimensional version of their mark as well, as a backup plan.
 |
|
 |
| Soh Kar Liang and Angeline Raj |
Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd
152 Beach Road, #30-00 Gateway East
Singapore 189721
Tel: +65 6333 7200
Fax: +65 6333 7222
mail@ecsf-asia.com
www.ecsf-asia.com