Most Read Contributor in South Africa, September 2016
The Kit Kat shape saga goes on and on. A few months back we
reported on how the Advocate General ("AG") of the EU had
written an opinion on the issue of an opposition by Cadbury (now
Mondelez) to Nestle's application to
register the four-fingered shape of its Kit Kat chocolate bar as a
UK trade mark . The opinion was written because a UK court had
referred the issue to the Court of Justice of the European Union
("CJEU") for guidance. The AG's opinion was that the
trade mark application should fail.
There were two reasons for this. The first was that the
application contravened the functionality or "technical
result" exclusion; in other words, the provision that says
that a trade mark must not consist exclusively of the shape that
results from the nature of the goods, or the shape that is
necessary to obtain a technical result. On this score, the AG
suggested that this exclusion applies to both the way in which the
goods function and the way in which they are manufactured –
it's been claimed that the shape of the Kit Kat bar not only
makes it easier for consumers to break the product up, but also
makes it easier for the company to remove it from the mould during
the manufacturing process.
More controversially, however, the AG also suggested that the
application should be refused on the basis that the Kit Kat shape
had not acquired the level of distinctiveness that is required for
trade mark registration. This is despite the fact that a survey
that Nestle had submitted suggested that 90% of UK consumers
recognise the four-finger shape. The AG's view on this was that
mere recognition of the shape isn't sufficient, because it
doesn't follow that consumers actually perceive it as the trade
mark of Nestle.
The CJEU has now handed down its ruling. On this issue of the
technical result exclusion, it said that the reason why this exists
is to prevent trade mark law from being used as a way of
monopolising technical solutions or functional characteristics that
a consumer would be likely to look for in the goods of competitors.
It went on to say that the technical result exclusion relates to
the way that the goods function only, and does not extend to the
way in which they're manufactured.
On the issue of acquired distinctiveness, however, the court was
a little vague. It said that a trade mark applicant must show that,
as a result of extensive use, the trade mark identifies the goods
as coming from that company. This use must not only be trade mark
use, but it must also be use of the trade mark that the company
wants to register. What the trade mark applicant cannot do is
simply submit evidence of use of the trade mark that it wants to
register in conjunction with other trade marks (I assume that the
court had the word trade mark "Kit Kat" in mind
It's worth bearing in mind that the CJEU does not decide
cases, but simply answers specific legal questions that are put to
it. So what happens now is that the case goes back to the UK court
that referred the matter to the CJEU. Some trade mark lawyers seem
to feel that this is the end of the road for Nestle. Others,
however, feel that it creates an opportunity. They seem to think
that Nestle may have the opportunity to present a new survey to the
UK court - one that is far more specific, and one that makes it
clear that people don't simply recognise the Kit Kat shape but
also associate it with Nestle, and that they do this without the
assistance of any other trade marks like Kit Kat. We'll have to
wait and see!
One thing we can be sure of, is that Nestle will be glad that
the South African authorities aren't quite as strict or nuanced
in these matters. In a judgment that was handed down at the end of
2014, the Supreme Court of Appeal held that a trade mark
registration for the shape of the Kit Kat chocolate bar was valid,
despite the fact that South Africa also has a technical result
exclusion. The court held that the trade mark did not consist
"exclusively" of a shape that's necessary to obtain a
technical result because, even though there were functional
features, there were also non-functional features, such as the
More significantly, the court also found that the shape had
become distinctive through use. The court was happy to accept this
on the basis of evidence of use going back many years and it
seemingly drew no distinction between mere recognition and
acceptance as a trade mark. It also didn't seem to take into
account the fact that the shape may have been used in conjunction
with word trade marks like "Kit Kat".
Although shape trade mark applications are examined critically
in South Africa, it is, I think, safe to say that they generally
stand a better chance of success than applications in the EU.
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