New Zealand: Shape Trade Marks - the Sign of the Times

Last Updated: 16 December 2002
Article by Earl Gray

Recently we looked at the European Court of Justice's decision in Koninklijke Philips Electronics NV v Remington Consumer Products Limited. That case, which centred around the registrability of the shape of a three-headed rotary razor, held that where a shape has a functional purpose or technical effect, companies should not be granted a monopoly via a trade mark registration in these shapes. The decision did not, however, inhibit the registration of shapes as trade marks where the shapes are not functional. This was consistent with the practice in New Zealand. Examples of packaging shapes that have been granted trade mark protection in New Zealand in this way include Toblerone chocolate bar and Hershey's Kiss.

In a blow for current or would-be applicants for these types of shape trade marks, a recent decision of the Commissioner of Trade Marks has called into question the ability to register shape trade marks in New Zealand at all. The Commissioner held that the shape of Nestlé's Kit Kat chocolate bar was not registrable as a trade mark as, on a literal interpretation of the Trade Marks Act, a shape is not a "sign".

This decision appears difficult to justify and seems unlikely to be sustained in the long term. In our view it is neither a "sign of the times", nor the law. We believe that the definition of "sign", coupled with the definition of "trade mark" in the Trade Marks Act, is broad enough to include shapes. The weight of international and local New Zealand context also confirms the trend towards this broadening rather than narrowing of what is protectable as a trade mark, including:

  • the previous and continuing Intellectual Property Office of New Zealand practice to accept shape trade marks for registration;
  • the significant number of existing registrations for shape trade marks in New Zealand; and
  • international trends such as those in Australia to allow shape marks to be inherently registrable as trade marks without evidence of factual distinctiveness (see Kenman Kandy v Register of Trade Marks).

The KIt Kat Case

In December 1996, Nestlé applied to register the shape of its two- and four-bar Kit Kat shapes as trade marks. Following consideration by IPONZ and the filing of evidence of factual distinctiveness, the applications were advertised prior to acceptance in January 1998. Soon after, the applications were opposed by The Horizon Biscuit Company of the United Kingdom and Cadbury New Zealand. Although both parties filed significant evidence in opposition, the case was essentially determined as a matter of statutory interpretation.

The Commissioner of Trade Marks considered three key issues:

1. Do each of the items (the two shapes) constitute a sign?

2. If so, do each of those items (signs) constitute a trade mark?

3. If so, are those trade marks registrable?

Although detailed consideration was given to each of the three issues, the central issue in the case was whether the two shapes could constitute a sign.

THe Sign of the Times?

At the time of Nestlé's applications, the definition of "mark" and "trade mark" in the Trade Marks Act had just been amended to take account of the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") to which New Zealand is a party. Of particular note, the definition of "mark" in the Trade Marks Act was amended to become "sign" and broadened to specifically include colour. This change was consistent with article 15 of TRIPS.

Although at first blush the change from the word "mark" to "sign" may appear only minor (the Commissioner appeared to think nothing of it), the change seems to indicate substantial broadening of the approach to what may be registrable as a trade mark. If the legislature had intended that the only change was to be the inclusion of colour, there would have been no need to change the definition from "mark" to "sign". Yet clearly there was a decision to change the work "mark" (which implies a physical "marking on something) to the broader word "sign" (which does not necessitate the same physical connection or "marking"). The change removes many of the difficulties that previously arose for "non-traditional trade marks" such as shapes which did not fit neatly into the traditional role of a "mark". This is also reflected in changes to the definition of "trade mark", which was broadened, requiring principally that the "sign" only be capable of being represented graphically and be capable of distinguishing the goods or services of one person from those of another.

It can also be argued that the legislature assumed the definition of "sign" included shapes. Indeed, in 2000, when the legislature saw fit to make further changes to the definition of "sign" to include smells, sounds and tastes, at no time was there a movement to include shapes "for the avoidance of doubt", which appeared to be the rationale in specifically including smells, sounds and tastes.

This commonsense approach to what can constitute a "sign" was accepted by IPONZ which, following the initial amendment in 1995, allowed many shape trade mark applications to proceed to acceptance.

In the Kit Kat decision, however, the Commissioner noted that, notwithstanding current IPONZ practice, the issue of whether shapes could be registered as trade marks had not been the subject of any real debate in New Zealand. The Commissioner's view was that, approaching the matter solely as a matter of interpretation (albeit a strict and literal one), as the definition of "sign" was basically the same as the previous definition for "mark" and did not specifically include three-dimensional shapes or products, a shape could not be registered as a trade mark. Consequently, the Commissioner held that the law relating to the registrability of shape trade marks was the same as it had been before the amendments to the Trade Marks Act following the TRIPS. That is, the decision of the House of Lords in Coca-Cola Trade Marks still applied, which had ruled that the function of trade mark legislation was to protect the mark, not the article which is marked (ie. shapes).

In our view, the Commissioner appears to have made an error at law in reaching this finding. It is hoped, however, that the uncertainty for shape trade mark owners created by this decision will be short-lived, especially with a new Trade Marks Act on the horizon.

Note: As this article went to press, IPONZ issued a policy decision stating that shape marks will, despite the Kit Kat decision, continue to be registered where individual applications meet the general requirements for registrability.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.