Most Read Contributor in South Africa, September 2016
There's seemingly no end to the question of whether or not
Nestlé can register the four-finger shape of its Kit Kat
chocolate bar as a trade mark.
Except, of course, in South Africa, where we know that it can.
We know that because the South African Supreme Court of Appeal came
to that conclusion in 2014. The court held that the shape trade
mark was not hit by the "technical result" exclusion,
because the trade mark did not consist "exclusively" of a
shape that's necessary to obtain a technical result. The court
felt that, even though there were functional features to the shape,
there were also non-functional features. The court also held that
the four-finger shape had become distinctive through use. The court
accepted that there had been substantial use of the shape in South
Africa, and it was happy to assume that people regarded the shape
as a trade mark. The fact that the shape had always been used in
conjunction with other trade marks, most notably the brand name Kit
Kat, was seemingly not considered.
Things are very different in Europe. Nestlé's trade
mark application for the four-finger shape in the UK was opposed by
Mondelēz (formerly Cadbury), and the UK Registry upheld the
opposition. The matter then went on appeal to the UK High Court,
which decided to refer certain legal questions to the Court of
Justice of the European Union ("the
The first step in that process involved the Attorney General
("AG") of the CJEU issuing an opinion.
The AG said that the application should be refused because it
contravened the technical result exclusion. The argument regarding
functionality is twofold, in that the shape makes it easier for the
company to remove the chocolate from the mould, and easier for
consumers to break it up into manageable chunks. The AG also felt
that the application should be refused on the basis that the Kit
Kat shape had not acquired the level of distinctiveness that's
required for trade mark registration. This, notwithstanding the
fact that survey evidence showed that 90% of UK consumers recognise
the four-finger shape. In the process, the AG said that there is a
distinction between simply recognising a product shape and actually
perceiving that shape as a trade mark.
The CJEU then issued its judgment. It said that the technical
result exclusion exists 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 exclusion relates
only to the way that the goods function (in this case the breaking
up by consumers), and doesn't extend to the way in which
they're manufactured (the lifting from the mould).
On the issue of acquired distinctiveness, the court said that
the trade mark owner must show that, as a result of extensive use,
consumers perceive the trade mark as coming from that company. The
use must be of the trade mark that the company wants to register.
What the company cannot do is simply submit evidence of use of the
trade mark that it wants to register in conjunction with other
trade marks (the court presumably had the word mark Kit Kat in mind
The UK court has now reconsidered this matter in light of the
CJEU's decision. As the parties chose not to pursue the
technical result issue, Judge Arnold confined himself to the issue
of acquired distinctiveness. The judge seemed disappointed that the
CJEU had not properly addressed his questions, but he interpreted
the judgment to mean that the trade mark owner must establish that
a significant proportion of those who buy the product perceive the
goods as originating from the trade mark owner because of the
shape, and not because of any other trade mark that might have been
used, such as the name Kit Kat. He also said that it is permissible
to consider whether those people would rely on the shape as
denoting origin if it was used on its own. He concluded that
Nestlé had failed to prove that consumers rely on the
four-finger shape as designating the origin of goods. So, the trade
mark application had correctly been refused by the UK registry.
Nestlé still has no trade mark registration for the shape
of its Kit Kat chocolate bar in the UK. It can, of course, take
this latest decision on appeal. Based on what we've seen so
far, there's probably a good chance that it will.
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It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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