A recent decision of the UK High Court concluded that
the shape of KIT KAT chocolate bar was not registrable as a
Société des Produits Nestlé SA
("Nestlé") applied to register the
three-dimensional shape of the KIT KAT chocolate bar. The
applied-for mark ("Mark") is set out below:
The Trade Mark corresponds to the shape of Nestlé's
four-finger KIT KAT product shown below:
Cadbury UK Ltd ("Cadbury") opposed the application on
the grounds that the Mark was not distinctive. Nestlé
responded by asserting that the Mark had become distinctive at the
relevant date by virtue of acquired distinctiveness.
The hearing officer concluded the applicant had shown
recognition of the Mark amongst a significant proportion of the
relevant public for chocolate confectionery but not that consumers
relied on the shape to identify the origin of the goods. The key
i) There was no evidence that the shape of the product has been
featured in the Nestlé's promotions for its goods for
many years prior to the date of the application;
ii) The product was sold in an opaque wrapper and the wrapper
did not show the shape of the goods;
iii) There is no evidence – and it did not seem likely
– that consumers used the shape of the goods post purchase in
order to check that they had chosen the product from their intended
As a result it seemed likely that consumers rely only on the
word mark KIT KAT and the other word and the pictorial marks used
in relation to the goods in order to identify the trade origin of
the goods. They associated the shape with KIT KAT (and therefore
with Nestlé), but no more than that.
Since it was necessary to show that consumers relied on the
shape mark in order to distinguish the trade source of the goods at
issue, the claim of acquired distinctiveness failed.
Nestlé appealed from the decision to the U.K. High Court.
The court decided that it was necessary to seek clarification of
the law from the Court of Justice of the European Union in order to
determine the appeal. Eventually the judge determined that in order
to demonstrate that a trademark has acquired distinctive character,
the applicant must prove that, at the relevant date, a significant
proportion of the relevant class of consumers perceive the goods as
originating from a particular undertaking because of the
mark in question (as opposed to any other trademark which may also
When this approach was applied the judge agreed with the hearing
officer's decision and dismissed the appeal.
The Canadian Position
The Canadian position is similar. There is no question that
colour and shape can help to distinguish the products of one
manufacturer from another. Shape and colour can also be powerful
influences on consumer behaviour.
But showing that product appearance or get-up has become
distinctive is not easy to do. There are sound public policy
concerns that arise from an expansive recognition of
distinctiveness in the area of non-functional product design.
The concerns arise from the fact that trade owner in such cases
will have an unrestricted monopoly relating to the use of the
It is not fatal to a trademark registration that consumers may
use other means than the mark for identifying the product with a
sole source. However, there must be sufficient evidence to show
that the trademark is recognized on its own. A trademark based on
get-up cannot acquire its distinctiveness by virtue of its use in
combination with a distinctive wordmark.
There have been a number of Canadian cases involving the shape
of pharmaceutical pills or pharmaceutical dispensers which have
denied trademark protection to applicants for similar reasons.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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