IP Information & News

Have a break, Nestlé…

The Advocate General has given his opinion on questions regarding shape trade marks.

In July 2010, Nestlé applied to register its well-known four finger chocolate coated wafer Kit Kat bar, which has been sold in the UK since 1935, as a 3D shape trade mark in the UK in class 30.

It was accepted by the UK IPO (Intellectual Property Office) on the basis that Nestlé had shown the mark had acquired distinctive character as a result of its use before the application date. The application was opposed on three grounds of the Trade Marks Act 1994 by Nestlé’s rival, Cadbury. It claimed that:

  1. the mark is devoid of distinctive character, so cannot indicate the commercial origin of the goods
  2. the sign consists exclusively of the shape which results from the nature of the product itself
  3. the sign consists exclusively of the shape of the product which is necessary to obtain a technical result

Nestlé argued that the mark of the application had acquired distinctiveness through use before the application date. Even though survey evidence showed that 90% of the respondents recognised or mentioned ‘Kit Kat’ in their responses to seeing an image of the mark, the Hearing Officer held that the mark was devoid of inherent distinctive character and had not acquired distinctiveness through use. He emphasised that there was a difference between recognition of the shape and the shape acting as a badge of origin. He also held that the shape of the Kit Kat consisted of 3 essential elements:

  1. the rectangular slab of chocolate
  2. the presence, position and depth of the breaking grooves (i.e. for snapping the fingers)
  3. the number of grooves, which determined the number of fingers

These elements meant that the shape resulted from the nature of the goods themselves and were necessary to obtain a technical result.

On appeal, neither party challenged the facts, but there was considerable debate over the application of the law by the Hearing Officer. Arnold J agreed in principle with the Hearing Officer and the views of Cadbury, except with regards to the functions of a 3D trade mark, where he believed the law required clarity and he referred the matter to the CJEU.

On 11 June 2015, the Advocate General gave his opinion and suggested the following answers to the questions of Arnold J:

The trade mark applicant must prove that the sign for which registration is sought indicates the exclusive origin of the goods or services at issue (i.e. regardless of any other marks present, such as Kit Kat/packaging etc.) which may help a consumer to recognise the sign as a trade mark.

Registration must be precluded where the essential features of the sign to be registered, result from the nature of the goods themselves, or are necessary to obtain a technical result.

Registration must also be precluded where the manner of manufacture is necessary for obtaining a technical result.

The opinion of the Advocate General shows that it does not suffice to demonstrate that the public recognises a shape of a product; to be capable of registration as a trade mark, the shape on its own must act as a badge of origin. Although a mark can acquire distinctiveness through use when used in combination with other signs, the sign must act as a trade mark in its own right. Once the CJEU has given its final judgement, the case will revert to the UK High Court for a decision on the application.

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