The Advocate General of the European Court of Justice has handed
down his decision on whether the shape of Nestlé's KIT
KAT four finger bar shape qualifies for trade mark registration in
the United Kingdom. The AG's view was that the shape did not
qualify for registration (see here for our article on this decision
and its international context)
While the Nestle case is the centre of attention we've had
our own shape mark case for a one finger chocolate bar bubbling
away in New Zealand, culminating in a decision in favour of
registration in March.
By way of background, J H Whittaker & Son
(Whittaker's) filed a trade mark application
for the shape of its SANTE® bar back in 2010. The application
was accepted but registration was opposed by Empire Confectionary
Similar to the questions in Nestlé's case, the
Hearings Officer had to address the following questions:
Is the sign a trade mark?
If so, does it have a distinctive character
If it does not have a distinctive character, has it acquired
that character by use?
Taking each in turn, the Hearing Officer found:
The SANTE shape was not simply a generic expression for
chocolate bars, and therefore the sign was a trade mark;
On balance, the SANTE shape fell marginally short of the
distinctive character required for registration minus acquired
distinctiveness through use;
The SANTE bar shape had acquired distinctiveness through
One of the key factors in the SANTE bar case is that
Whittaker's had for many years (55 years) sold the SANTE bar in
an unwrapped form and, in addition, when the bar was sold wrapped
the wrapping 'hugged' the shape of the bar.
The form of sale and of wrapping for the SANTE bar therefore
differs from that in Nestlé's KIT KAT case, where one of
the hurdles they faced was showing that people recognised the bar
shape itself as a trade mark, even though the product was wrapped
and bore significant branding across the packaging.
What the SANTE bar case confirms again is that it is possible to
register shapes as trade marks. Though, as mentioned in our earlier
article, significant evidence that the shape has become distinctive
through long and exclusive use will be needed.
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guide to the subject matter. Specialist advice should be sought
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