There has always been doubt as to whether 3D marks are registrable in Malaysia. A “mark” is defined under section 3(1) of the Malaysian Trade Marks Act 1976 (“the Act”) to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. It is worthwhile to note that the Act is based on the UK Trade Marks Act 1938, which is fairly archaic, unlike the more contemporary UK Trade Marks Act 1994 which expressly provides that a trade mark may consist of, among others, “the shape of goods or their packaging”.

In a recent decision namely Kraft Foods Schweiz Holding GmbH v Registrar of Trade Marks [2016] 9 CLJ 558, the IP Court at Kuala Lumpur has opined that 3D mark is registrable. The relevant facts of the case are as follows:

The Registrar of Trade Marks (“Registrar”) in the application for registration of the device “”, described as “Toblerone Chocolate Teeth 3D in colour” (“the said mark”) filed by Kraft Foods Schweiz Holding GmbH (“Kraft Foods”), refused to register the said mark based on inter alia the ground that the said mark is not a “mark” within the definition of the Act.

Pursuant to the Rules of Court 2012, an appeal against the Registrar’s decision had to be filed within 1 month from the date of the decision. Kraft Foods applied for an extension of time from the Registrar to file the appeal and was granted 2 months to do so. However, the appeal was only filed 7 days after the deadline. Having failed to seek a further extension of time, it was held that the appeal was time-barred on procedural grounds and it was dismissed. Notwithstanding the foregoing, the learned judge went on to opine on the issue of the registrability of a 3D mark.

The learned judge stated that although Malaysia is a signatory to the TRIPS agreement, nevertheless, such treaty would only be enforceable in Malaysia if the Parliament has passed legislation to give effect to such a treaty. As such, even though Article 15(1) of the TRIPS agreement has provided for a wide definition of trade mark which includes a 3D mark, the learned judge could not refer to the TRIPS agreement for reference.

The learned judge stated that whether or not 3D marks fall within the definition of a mark under the Act is a construction issue which could not be answered by referring to the Registrar’s Manual of Trade Marks Law & Practice as it is not law and only meant to be a guidance and instruction of the staff of the Trade Marks Registry. The construction issue also could not be resolved by referring to the definition of an “industrial design” in section 3(1) of the Industrial Act 1996 or to present trade mark legislations in the UK, Singapore or Australia, which are all very different from the Act. The judge went on to say that he could not accept the said mark to be merely an extension of Kraft Foods’ two earlier registered trade marks for “” and “”. Further, the learned judge opined that the lack of disclaimers in Kraft Foods’ earlier registrations does not necessarily mean that the subsequent application for the said mark should be registered as of right. Notwithstanding the foregoing, the learned judge held that a 3D mark still falls within the meaning of a “mark” under section 3(1) of the Act. The learned judge relied on the House of Lords case of Smith Kline and French Laboratories Ltd v Sterling-Winthrop Group Ltd [1975] 2 All ER 578 where 3D marks consisting of small spherical pellets enclosed in capsules with certain colour combinations were held to be registrable. The judge also said that a 3D mark falls within the meaning of a device.

The judge also relied on the Federal Court case of Yong Teng Hing B/S Hong Kong Trading Co & Anor v Walton International Ltd [2012] 6 CLJ 337 where it was held that a 3D shape mark in the form of a container is registrable if:

• the applicant is the bona fide proprietor of the 3D shape mark;
• the 3D shape mark is distinctive of the applicant’s goods; and
• the registration of the 3D shape mark is not prohibited by the Act based on prior identical or confusingly similar marks.

However, based on the facts of the present appeal, the learned judge opined that the said mark was not a trade mark under section 3(1) of the Act as there was nothing in the said mark which would indicate a connection in the course of trade between Kraft Foods and its goods. Further, the judge held that Kraft Foods bore the legal burden of proving that the said mark was distinctive or capable of distinguishing its goods in the course of trade mark from those of other traders. The relevant date for Kraft Foods to prove the said mark’s distinctiveness is as at the date of application for the said mark. The learned judge took the view that the Registrar must consider both the inherent and factual distinctiveness of the said mark. Kraft Foods did not adduce any evidence of use of the said mark or any other circumstances to show that the said mark was distinctive as at the date of application. Kraft Foods had always used the said mark alongside the word “TOBLERONE” in relation to its goods. Kraft Foods thus could not establish that the said mark had acquired distinctiveness on its own. Accordingly, the learned judge held that the appeal should be dismissed with costs.

Following the above decision, it is note-worthy that there was a surge in the number of applications for 3D marks in Malaysia.