Following on from the AG’s opinion in June, reported here, the Court of Justice of the European Union (CJEU) has given its guidance on whether a KitKat could be registered as a 3D shape mark.
To recap, the questions referred to the CJEU by Arnold J were:
1. Is it sufficient for the applicant for registration to prove that, at the relevant date, a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods and would therefore identify the applicant; or, must the applicant prove that a significant proportion of the relevant class of persons rely purely upon the mark (and not any other marks present, such as the wrapper) as indicating the origin of the goods?
(The difference with the tests is that the first requires mere association, whereas the second is far stricter and requires the identity to be known.)
2. Where a shape consists of 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, is registration of that shape as a trade mark precluded by Article 3(1)(e)(i) and/or (ii) of the Trade Marks Directive?
3. Should Article 3(1)(e)(ii) be interpreted as precluding shapes which are necessary to obtain a technical result with regard to the manner in which the goods are manufactured as opposed to the manner in which the goods function?
The CJEU has decided that the KitKat four finger chocolate bar shape cannot be registered as a trade mark. The CJEU answered the questions in the order of 2, 3 and 1.
2. Absolute grounds (Article 3(1)(e)) of the Trade Marks Directive should be applied independently and potentially cumulatively. The CJEU held that although the grounds for refusal in Article 3(1)(e) are to be considered independently, if just one of the grounds is applicable to the sign in question, registration of that sign should be denied. It used the rationale that, ultimately, a trade mark proprietor should not have a monopoly on technical solutions or functional characteristics of goods which other users of such goods may also wish to use.
It follows that “Article 3(1)(e) must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains at least three essential features, one of which results from the nature of the goods themselves and two which are necessary to obtain a technical result”.
3. Article 3(1)(e)(ii) applies to the manner in which the goods function, not the manner in which they are manufactured.
1. Association or recognition alone is not enough to prove acquired distinctiveness.
In June, AG Whatelet stated that although a sign can acquire distinctiveness when used in conjunction with other marks, a sign must be capable of acting as a trade mark in its own right. Although 90% of the people Nestlé surveyed in evidence recognised the shape as originating from KitKat, the CJEU advised that this was not enough evidence to prove that it was the shape (and not the logo or associated packaging/get up) people recognised as a KitKat. The CJEU agreed with AG Whatelet’s analysis, concluding 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 the mark alone, as opposed to any other trade mark which may also be present, identifies the particular undertaking from which the goods originate”.
Contrary to some media reports, this is not the end of the matter. The case will now go back to the UK High Court for a decision from the trial judge on the Application. Nestlé is reported as being "very pleased" with the result as it now gets to find out whether Arnold J is prepared to accept the application on the grounds that the survey evidence suggested a very high proportion of the public recognised the shape.
It remains to be seen how Arnold J will decide the case and whether the objections under Article 3(1)(e), which cannot be overcome by filing evidence of acquired distinctiveness, will lead to the application being rejected.