Most people in the UK would recognise the KitKat shape. Yet, in the long-running dispute between Nestlé and Cadbury, the Court of Appeal decided that the shape of Nestlé's four- finger chocolate bar does not have the necessary acquired distinctiveness to qualify for protection as a UK trade mark.
The decision demonstrates how high the hurdles are for those seeking to establish distinctiveness in relation to inherently non- distinctive marks, such as the shapes of products and packaging. In the decision, the Court of Appeal stressed the significant distinction between recognition and association on the one hand (which is not enough), and perception as to exclusive origin on the other.
Nestlé had relied upon a survey which indicated that, when shown a picture of the product, and asked questions relating to source, at least half the respondents gave answers to the effect of "It's a KitKat". Whilst many might understandably consider this sufficient to demonstrate that the shape had acquired distinctiveness, the Court of Appeal decided that this evidence only demonstrated that consumers recognised and associated the shape with KitKat - and therefore with Nestlé - but no more than that. It did not satisfy the proper test to be applied, which had been laid down by the European Court of Justice
(CJEU), namely whether consumers would perceive the shape as originating from a particular undertaking, and not from others.
Establishing the relevant perception in each case will depend upon how the mark has been used. Businesses need to consider very carefully the use they make of a particular mark - such as
a shape - in order to promote a product.This will put them in a position to compile the necessary evidence to demonstrate that the shape qualifies for trade mark protection through acquired distinctiveness, including in any survey evidence.
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