In Colgate-Palmolive Company (Colgate) v The Procter & Gamble Company (P&G), P&G challenged Colgate’s application to register a two-dimensional (2D) device representing a ‘slug’ of toothpaste comprising of green, white and blue strips in a “sandwich appearance” for the goods “Dentifrices” (which includes paste, gel or powder for use in oral hygiene) in Class 3. P&G raised 3D mark objections against Colgate’s application, among others, as follows:

• (a) 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 is not capable 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


• (b) 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 these grounds raised by P&G are summarised as follows:

• (a) The application related to a 2-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


• (b) The mark did not relate to a 3 dimensional shape mark but a 2 dimensional device mark.

It should be noted that Colgate failed to register a similar series of 2D and 3D versions of ‘slug’ marks and their colour variations in the UK. Relying on Jacob J’s statements in Philips v. Remington (which considered Philips' attempt to register a 2D representation of a three-headed faceplate of their rotary shaver), it was held in the UK that no distinction should be drawn between 2D and 3D trade marks. And so, 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 2D device marks and 3D shape marks, though convenient in this case, seems to also draw a contrast with the UK position that there should be no distinction between 2D and 3D trade marks. Until the situation is made clearer by later decisions, trade mark owners seeking registration for their 3D marks in Singapore may wish to consider registering a 2D device version of their mark as well as a backup plan.

A graduate of the National University of Singapore, Kar Liang holds an LLB(Hons) and an MSc(CompSci). Kar Liang is a frequent seminar speaker and the first Singaporean to be appointed by the World Intellectual Property Organisation as a domain name panelist to adjudicate domain name disputes under the Uniform Dispute Resolution Policy. He is a Singapore Registered Patent Agent which has been practising as an intellectual property & technology lawyer for over 15 years and has represented clients from diverse commercial fields and industries.

Mr Soh Kar Liang | Director | Email : klsoh@ecsf-asia.com

Angeline obtained a Bachelor of Laws (Hons) degree from the University of London. She was admitted as an Advocate and Solicitor in the High Court of Malaya. Whilst practising law in Malaysia, Angeline obtained a Master of Laws (Hons) Degree from the University of Malaya. As a registered trade mark, patent and design agent in Malaysia, Angeline currently advises and prosecutes both local and international trade mark and industrial designs applications (national and international registrations) as well as advises on opposition and infringement matters in relation to the same. She also handles domain name registrations.

Ms Angeline Raj | Associate | Email : araj@ecsf-asia.com

ELLA CHEONG SPRUSON & FERGUSON (ECSF) was formed by established leading Intellectual Property (IP) practitioners from Asia and Australia. ECSF harnesses the talents and taps the experience of its IP experts to establish a specialist regional Asian IP practice spanning South East Asia and the Indian sub-continent. Our combined experience adds up to more than a century, so you know you are in capable hands with that recognisable personalised service. Through our regional offices, professional associations and panel of legal counsel in the various jurisdictions throughout the region, the ECSF synergy provides a one-stop, multi-networked agency securing, protecting and enforcing your IP rights throughout Asia.

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