The Court of Justice of the European Union (CJEU) recently considered a number of questions referred to it by the English High Court regarding Nestlé's attempts to register the 3D shape of its four fingered Kit Kat bars as a trade mark.
Nestlé had been frustrated in its attempts to register the shape mark due to the opposition of its rival Cadbury. To complicate matters further, there is some "history" between Cadbury and Nestlé. Previously Nestlé acted as a roadblock preventing Cadbury from trade marking the purple colour of its packaging. Now, Cadbury is serving just dessert by attempting to prevent Nestlé from registering the 3d shape of its four fingered Kit Kat bars.
In October 2013 the Intellectual Property Office refused Nestlé's application to trade mark the shape on the grounds that the mark was devoid of distinctive character (except in relation to cakes and pastries). Nestlé appealed the decision and the matter came before the High Court. Justice Arnold concluded that there were certain aspects of trade mark law that required clarification before he could make his decision.
Amongst other things, he asked the CJEU to consider whether, in order to establish that a mark has acquired distinctive character through use, it was sufficient for the applicant to prove that a significant proportion of the relevant public recognised and associated the mark with the applicant's goods. If not, he asked was it for the applicant to prove that a significant proportion of the relevant public rely on the specific mark to show the origin of the goods.
The CJEU concluded that in determining whether a mark has acquired distinctiveness through use, the applicant must show that the mark, when considered alone, can identify the origin of the goods. The case will now return to the High Court for Justice Arnold to make his decision on the specific facts before him.
Nestlé may have something of an uphill struggle to persuade the High Court that its mark should be registered. The CJEU's ruling effectively means that Nestlé will have to prove that the public rely on the four finger shape alone to identify the biscuit. When you consider a Kit Kat it seems this may be a tough task. Aside from the shape, there is the colour of the packaging, the logo and the name, all of which contribute to the distinctive nature of the snack. Nestle has, however, a history of enduring long legal slogs having previously battled for over forty years to have its slogan "have a break" registered.
All things considered, the net effect of the CJEU's decision is that shape marks may become very difficult to register as trade marks. The relevant buying public will rarely associate the shape of a product alone as an indication of the good's origin.
The CEUJ's decision is available at: http://curia.europa.eu/juris/document/document.jsf?docid=164950&doclang=EN
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