South Africa: Kit Kat And Other Product Shapes

Last Updated: 14 August 2013
Article by Ilse Du Plessis

Most Read Contributor in South Africa, September 2016

You might be forgiven for thinking that the law regarding trade mark protection for product shapes is a bit of a mess. The latest development is that the UK trade mark authorities have refused an application by Nestle to register the four-finger Kit Kat shape, which is described in the application as 'four trapezoid bars aligned on a rectangular base'. The reasoning: the shape isn't intended to act as a brand identifier but rather as an aid to the consumer, in that it helps the consumer break the bar up.  Which makes the shape technical in nature! The hearing officer went so far as to suggest that the brand identifier in the case of Kit Kat is in fact the colour red that's used on the packaging.   A somewhat surprising result, a mere year after the EU trade mark authorities decided that the Kit Kat shape could be registered as a Community Trade Mark (CTM).

Conspiracy theorists will point to the fact that in both cases Nestle's trade mark application was opposed by Cadbury, but the opposition only succeeded in the UK, which is of course Cadbury's home country. They may also point to the fact that Cadbury had another surprise victory in the UK a while back when the company managed to persuade the High Court that it was entitled to get a UK trade mark registration for the colour purple, following a vigorous opposition by Nestle. This despite the fact that colour marks are every bit as difficult to register as product shape marks.  And despite the fact that the court felt the need to issue this warning:   'Unless the registration of trade marks is kept firmly in its proper sphere, it is capable of creating perpetual unjustified monopolies in areas it should not.' Features like product shape and colour are clearly very important in the ultra-competitive confectionery market, where issues like impulse buying, supermarket check-out placement, and child pressure come into the mix.

Nestles' failure in the UK (and victory in the EU) should be seen in the context of another product shape case we reported on last year.  Lindt failed in its attempt to get a CTM registration for the shape of the Lindt bunny (in gold foil with red ribbon and a bell), because the authorities felt that chocolates of this shape and appearance were commonplace, especially around Easter Time, with the result that the shape and appearance were not likely to be seen as an indicator of commercial origin. This despite the fact that Lindt had managed to get trade mark registrations for this same shape and appearance in a number of individual EU countries – it's not clear just how valuable these registrations in fact are, because Lindt recently failed in its attempt to enforce its German registration against a competitor called Riegelen, although it did have success against a different competitor in Austria!

There are two main problems with product shape trade marks. The first is that the law specifically prohibits the registration of shapes that have a technical function. As I mentioned, the UK application for the Kit Kat shape was refused on this basis, and there have been a number of high-profile CTM casualties in the past – the Lego block was refused for being technical in nature, as was the shape of the Philips three-headed shaver, and, very recently, the shape of a three-ball vibrator (no need to go into detail here!).

The second problem is that, even if the shape doesn't have a technical function, the courts and trade mark authorities have made it clear that a shape will have to be quite special or unusual to be registered as a trade mark. The court in the Lindt case said this:  'Only a mark which departs significantly from the norm or customs of the industry and thereby fulfils its essential function of indicating origin is not devoid of distinctive character.

Few product shapes seemingly meet this requirement.  By way of example, CTM applications for the shape of the Bounty chocolate bar and the Werther's Original sweet were refused. On the other hand, applications by car manufactures have been more successful – applications to register the shapes of Porsche, Smart and Mini were accepted.  In an interesting case that was heard in the UK last year, an application to register  the Scrabble tile – described as comprising a 3-D ivory coloured tile which has a letter and a number from 1-10 on the top surface  -  was refused because it wasn't sufficiently precise.

In South Africa there's not a great deal of a case law on product shape trade marks. Some time back the Supreme Court of Appeal held that the shape of the Grunberger wine bottle was not a valid trade mark because shapes don't generally indicate origin. But in a more recent decision that same court accepted that the three-stripe motif that appears on Adidas shoes performs a trade mark function rather than a decorative function. This may not be a product shape in the strict sense, but the decision does suggest that the courts may be more open to the idea of trade mark registration for unusual marks.

South African companies wishing to protect product shape should certainly consider trade mark registration as an option. They should also consider design registration, an oft- overlooked area of intellectual property law. A product shape can be protected by way of a design registration for up to 15 years – with design registration novelty rather than distinctiveness is the requirement. It's also possible to use both systems in tandem. A product shape that is new can initially be protected by a design registration and subsequently by a trade mark registration (which can be renewed indefinitely) once the shape has become distinctive.

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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