No chocolate treat for Nestlé in trade mark dispute with Cadbury over registration of KitKat shape

The shape of a KitKat alone is not distinctive enough for consumers to associate it with the snack, the European Court of Justice has ruled.

The CJEU held that the four-finger chocolate biscuit shape of a KitKat does not meet the requirements for trade mark registration under EU law, unless confectioners Nestlé can prove the shape is integral to consumer recognition of the brand.

Nestlé has been seeking to register the shape of its four-finger chocolate wafer snack, but rival Cadbury opposed the application.

Following an appeal by Nestle, the High Court referred the matter to the CJEU in Luxembourg for preliminary ruling on the case under EU law.

The court heard that in July 2010 Nestlé filed an application for registration of the three-dimensional sign as a trade mark in the UK.

The Trade Marks Registry of the United Kingdom Intellectual Property Office accepted the application and it was published for the purposes of opposition.

The view was taken that, even though the trade mark at issue had “no inherent distinctive character”, the trade mark applicant had shown that it had “acquired distinctive character following the use made of it”.

However, Cadbury filed a notice of opposition to the application for registration alleging that registration should be refused on the basis of the provisions of the Trade Marks Act 1994, which transpose Article 3(1)(b), Article 3(1)(e)(i) and (ii) and Article 3(3) of Directive 2008/95 that approximates the laws of the member states relating to trade marks.

The examiner of the UK Intellectual Property Office found that the trade mark at issue was “devoid of inherent distinctive character” and that it had not acquired such a character following the use which had been made of it.

Nestlé appealed against that conclusion in the High Court, while Cadbury cross-appealed, challenging the decision in so far as that court found that the trade mark at issue had inherent distinctive character in respect of cakes and pastries, and that it did not consist exclusively of either the shape resulting from the nature of the goods themselves or the shape necessary to obtain a technical result.

The High Court decided to stay the proceedings and refer the matter to the Court of Justice.

The CJEU observed that regardless of whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark, the “fundamental condition” is that, as a consequence of that use, the sign for which registration as a trade mark is sought may serve to identify, in the minds of the relevant class of persons, the goods to which it relates.

The court’s judgment stated: “It must therefore be concluded…that although the trade mark for which registration is sought may have been used as part of a registered trade mark or in conjunction with such a mark, the fact remains that, for the purposes of the registration of the mark itself, the trade mark applicant must prove that that mark alone, as opposed to any other trade mark which may also be present, identifies the particular undertaking from which the goods originate.

“Having regard to those considerations, the answer to the first question is that, in order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3) of Directive 2008/95, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company.”

On those grounds, the court ruled that EU law relating to trade marks “must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue”.

It added that directive under which registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, “must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured”.

The judgment said: “In order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3) of Directive 2008/95, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company.”

Robert Buchan, a partner in Brodies’ IP team and an accredited IP specialist, said: “The CJEU’s judgement does seem to be consistent with existing case law which has seen failed attempts to register the shapes of various dishwasher tablets, soaps and even a torch.

“It is clear that, when an application for registration is opposed, brand owners will continue to face a high bar in trying to establish that their shape mark has sufficient distinctiveness to merit protection.

“It is much more challenging to prove that shapes are perceived by consumers as a guarantee of origin of the products, as generally we as consumers don’t rely on shapes alone to identify who is selling the goods.”

He added: “If the four-finger Kit Kat shape cannot be registered after 75 years of use as a UK trade mark it is likely that registration of shape marks will be even more challenging, and practically impossible, in the UK.

“Brand owners will have to continue to rely on brand names, logos or packaging to register trade marks, or rely on the common law of passing off which can look at the overall get up of the product.

“It will be much harder for all but the most fanciful or unique shapes to be registered as the reality is that most products are typically combined with one or more word marks or logos.”