This case concerns the registrability of three-dimensional (3D) marks. The Plaintiff, Kraft Foods had sought to apply to register a 3D prism-shaped mark in reddish brown colour, described as “Toblerone Chocolate Teeth 3D In Colour” (the “Proposed Mark”) for goods in Class 30 (chocolates etc.).

The Registrar refused to register the Proposed Mark for the following reasons:
a) it was deemed as a word with no direct reference to the character or quality of the Plaintiff’s goods;
b) it was not distinctive and was not capable of distinguishing the Plaintiff’s goods in the course of trade; and
c) it did not fall within the definitions of “mark” and “trade mark” under the Malaysian Trade Marks Act (“TMA”).

Kraft Foods appealed to the High Court against the Registrar’s refusal. Among the issues to be dealt with by the High Court were:
a) whether a 3D prism mark or a “shape” mark is a “mark” and “trade mark” according to s. 3(1) of the TMA; and
b) whether a 3D prism mark of the Plaintiff is distinctive of the Plaintiff’s goods within the meaning of s. 10(1)(e), (2A) and (2B) so as to be registrable under the TMA.

In relying on the UK judgment of Smith Kline and French Laboratories Ltd. and the dictionary meaning of the word “device” as stated in the definition of a “mark” in s. 3(1) of the TMA, the High Court held that a 3D mark is a “mark” under the TMA and is thus registrable. The High Court further relied on the Malaysian case of Yong Teng Hing B/S Hong Kong Trading Co & Anor v Walton International Ltd [2012] 6 CLJ 337 as to the conditions of registrability of a 3D “shape mark” where as long as the applicant is the bona fide owner of the mark, the mark is distinctive of the applicant’s goods and the registration of the mark is not prohibited by the TMA, then a 3D “shape mark” may be registered.

However in the present case, the High Court held that the Proposed Mark is not a “trade mark” under the TMA as there is nothing in that mark which would indicate a connection in the course of trade between the Plaintiff’s goods and the Plaintiff. With regards to distinctiveness, it was held that the Proposed Mark was not inherently distinctive as the Proposed Mark did not possess any feature which was capable of distinguishing the Plaintiff’s goods in the course of trade from the goods of other traders. The Proposed Mark was also held to be not factually distinctive as the Plaintiff had only used the Proposed Mark with the “TOBLERONE” name on or in relation to the Plaintiff’s goods and there was no evidence that the Plaintiff had used the Proposed Mark without the “TOBLERONE” name. The Proposed Mark was therefore not registrable as a 3D mark.