Are 3D Trademarks Registrable?

A 3D or three-dimensional trademark is characterised by a shape used to distinguish the goods or services of a source from the goods or services of other sources.

The Malaysian Trademarks Act 2019 defines trademarks by ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.’ 

Under this revamped definition from its predecessor Malaysian Trade Marks Act 1976, companies and businesses acquired an increased opportunity to trademark shapes particular to their brand. In 2016, the Intellectual Property court in Kuala Lumpur rejected the registration of a 3D trademark proposed by Kraft Foods Schweiz Holding GmbH (Kraft Foods) for the mark noted as ‘Toblerone Chocolate Teeth 3D in Colour’ for goods in Class 30. The court ruled the mark as unregistrable for the following reasons: 

1. No direct reference to the character or quality of the Plaintiff’s goods;
2. Not distinctive and not capable of distinguishing the Plantiff’s goods in the course of trade; and 
3. Did not fall within the definitions of a ‘mark’ and ‘trademark’ under the Malaysian Trade Marks Act 1976

Kraft Foods’ trademark application received a surge of publicity and led the IP courts to reconsider redefining 3D trademarks in context of the law. However, the difficulty in registering 3D trademarks isn’t idiosyncratic to Kraft Foods’ world famous Toblerone chocolate bar, nor to Malaysian Trademark Law. 

The definition of a mark is constantly changing to reflect dynamics of the real world. We observe this in the definitions of traditional trademarks and non-traditional trademarks, the latter which accommodates technological advances in the modern world affecting the representation of a company via its brand, name or logo. 

3D trademarks are a prominent example of this evolution of the law pressured by modern progress. As a result, plenty of 3D trademarks failed to be registered in the past decade or so. In 2018, another chocolate connoisseur KitKat failed to trademark its distinctive four-fingered shape. A year later, a 3D trademark proposed by iconic puzzle game Rubik’s Cube failed to register. The previously protected shape mark of the Coca-Cola bottle was deemed invalid after 8 years of receiving official trademarked status. 

It goes without saying 3D trademarks are tricky to register. There are several factors worth considering prior to making an application to trademark a three-dimensional shape: 

1. The trademark must have a distinctive character. The proposed 3D mark should possess more than a functional characteristic to be considered as worthy of protection. 
2. The trademark must be described in detail. A comprehensive description should be included in the trademarking process to strengthen the application, such as the inclusion of a technical drawing of the 3D mark. 
3. The trademark must not be similar to others. Similarity to other goods or services in the proposed class will prove to be a challenge for the trademark to be registered. This objection was dealt to the Coca-Cola comany, who was informed of the similarity of their bottles to other beverages in its trade. 

Trademarks are crucial as an investment in both the short-and-long term goals for any business. The challenges in defeating the strict requirements applied to the registration of 3D trademarks speaks to the undeniable value of an original and unique asset to a company. 

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