The court ruled that a proposed 3D mark may not qualify as a trademark unless it is inherently distinctive within the meaning of the Trade Marks Act.

A. Issues

[1] This case discusses the following issues:

(1) whether this originating summons (This OS) is time-barred under O 87 r 3 of the Rules of 2012 (ROC);

(2) whether art 15(1) of the Agreement on Trade Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement) applies to the definitions of "mark" and "trade mark" in s 3(1) of the Trade Marks Act 1976 ( TMA );

(3) whether the Court can refer to the Registrar's "Manual of Trade Marks Law & Practice", 2nd edn (2003) (Registrar's Manual) in construing the meaning of "mark" and "trade mark" in s 3(1) TMA ;

(4) whether a three-dimensional (3D) prism mark or a "shape" mark is a "mark" and "trade mark" in s 3(1) TMA ; and

(5) whether a 3D prism mark of the plaintiff company (plaintiff) is distinctive of the plaintiff 's goods within the meaning of s 10(1) (e), (2A) and (2B) TMA so as to be registrable under the .

B. Facts

[2] The plaintiff is incorporated in Switzerland and manufactures confectionary, food and beverages. The plaintiff 's products have been exported throughout the world.

[3] This case concerns the "Toblerone" brand of chocolates and confectionary produced by the plaintiff. The "Toblerone" mark is in the shape of a prism which signifies the Swiss Alps mountain range and the Swiss origin of "Toblerone" products.

[4] The plaintiff has registered the "Toblerone" mark in various two-dimensional (2D) forms throughout the world. In Malaysia, the plaintiff has registered 22 "Toblerone" marks in various 2D forms for goods in Classes 25, 29 and 30 (the plaintiff 's Registered 2D Trade Marks).

[5] On 7 Jun 2012, the plaintiff applied to the Registrar of Trade Marks (Registrar) to register a 3D prism-shaped mark in reddish brown colour described as "Toblerone Chocolate Teeth 3D In Colour" for goods in Class 30 (chocolate, chocolate confectionary, cocoa, pastry and ice-cream) (Proposed Trade Mark). A 2D depiction of the Proposed Trade Mark is annexed to this judgment.

[6] The Registrar gave notice by way of a letter dated 14 December 2012 to the plaintiff 's trade mark agent (the plaintiff 's Agent) which stated, amongst others:

(1) the Proposed Trade Mark did not comply with s 10(1)(d) TMA because the Proposed Trade Mark was a word which had no direct reference to the character or quality of the plaintiff 's goods; and

(2) the Proposed Trade Mark was not distinctive as required by s 10(1)(e) TMA because the Proposed Trade Mark was not capable of distinguishing the Plaintiff 's goods in the course of trade.

[7] The plaintiff 's Agent presented written submission to the Registrar in support of the registration of the Proposed Trade Mark. The plaintiff 's Agent also appeared in a hearing before the Registrar on 9 June 2014.

[8] By way of a letter dated 17 October 2014, the Registrar informed the plaintiff 's Agent that the Registrar had refused to register the Proposed Trade Mark (Registrar's Refusal).

[9] Upon request by the plaintiff 's Agent, the Registrar gave written grounds for the Registrar's Refusal (Registrar's Grounds) by way of a letter dated 27 July 2015 (Registrar's Letter dated 27 July 2015).

[10] The Registrar's Grounds stated, amongst others, that the Proposed Trade Mark did not fall within the definitions of "mark" and "trade mark" in s 3(1) TMA .

[11] By way of a letter dated 14 August 2015, the plaintiff 's Agent applied to the Registrar for an extension of time to appeal to the High Court against the Registrar's Refusal. In the Registrar's letter dated 22 September 2015, (Registrar's Letter dated 22 September 2015) the Registrar gave a two-month extension of time from 27 August 2015 to 27 October 2015 for the plaintiff to appeal to the High Court against the Registrar's Refusal.

C. This OS

[12] This OS was filed on 3 November 2015 and prayed for, amongst others:

(1) the Registrar's Refusal be reversed by the High Court an