Back in September 2015, the Court of Justice of the European Union (CJEU) gave its guidance as to whether a four-fingered KitKat could be registered as a 3D shape mark by attempting to answer three questions set by Mr Justice Arnold. The long-running trade mark case was then referred back to the UK High Court, for a decision from the trial judge on the Application. Mr Justice Arnold handed down the following ruling on 20 January 2016.
In the latest legal blow to Nestlé, Arnold J has ruled that the 3D shape had not acquired sufficient distinctive character so as to be acceptable for registration as a trade mark. To recap, Arnold J had sought clarification from the CJEU on three points:
- Is it sufficient for the applicant to prove that a significant proportion of the relevant class of persons associate the mark with the applicant?
- Where a shape consists of three essential features which either result from the nature of the goods themselves or are necessary to obtain a technical result, should registration be denied?
- Should Article 3(1)(e)(11) be interpreted as precluding shapes which are necessary to obtain a technical result?
The guidance received from the CJEU in September advised that a trade mark which acquires distinctiveness can actually be registered as a trade mark, as long as the applicant can prove that the relevant class of persons perceives the mark as the identifiable indication of origin of the source of the goods. This would appear to be difficult, if not impossible, to do if the trade mark for which registration is being sought is the shape of a product that is sold in distinctive packaging, bearing a brand name that identifies the product.
In his decision, Arnold J said that this guidance from the CJEU had not been sufficient to answer this first question and that it was ambiguous. He added it was likely that similarly shaped goods had been produced by other companies, but consumers had not necessarily recognised them as being KitKats. This, he said, is inconsistent with the view that the 3D KitKat shape mark had acquired distinctive character. Nestlé's case was not helped by the existence of a Norwegian four fingered chocolate bar called Kvikk Lunsj, which has existed for nearly 80 years and is also available in the UK.
Nestlé said: "KitKat is much loved and the iconic shape of the four finger bar, which has been used in the UK for more than 80 years, is well known by consumers. We believe that the shape deserves to be protected as a trade mark in the UK and are disappointed that the court did not agree on this occasion." Nestlé has indicated that it’s planning to appeal against the decision, so this is unlikely to be the end of the matter.