UK: The Chocolate Wars (Part II) And The Taxi Wars

Last Updated: 11 February 2016
Article by Andrew Hawley

The chocolate confectionary market is arguably one of the most competitive within the UK. There are many different types, flavours and shapes of chocolate for us to enjoy, which are sold under numerous well-known household brands. However, although many of these brands are well known, are the chocolate bars themselves? Is it possible for a chocolate bar to be instantly recognisable and distinctive purely thanks to its shape alone, irrespective of any other branding?

The issue regarding whether the actual shape (alone) of a chocolate product is sufficient to identify the product to the relevant consumer was decided in the English High Court in the on-going Nestlé v Cadbury saga (referred back to the English Courts, with questions, by the Court of Justice of the European Union last year). This case specifically dealt with the question over whether Nestlé should be entitled to enjoy exclusive trade mark rights for the shape of its KitKat trade mark in the UK.

In summary, Nestlé sought to register its well known four finger shape, minus the KitKat logo, which is usually embossed on each finger and the packaging, as a trade mark in the UK for various goods in class 30, including chocolate products, chocolate confectionery, pastries, cakes and biscuits.

Rivals Cadbury successfully opposed this application on the basis that the shape of the KitKat mark was a feature of the nature of the goods and that it was necessary to achieve a technical result (to allow the consumer to easily break the bar). In the opposition proceedings, Nestlé filed evidence that the KitKat shape had acquired a distinctive character due to the use made of it in the UK which allowed the consumer to identify the product as a "KitKat" without any additional packaging or branding (which, if successful, would have allowed Nestle to successfully resist the opposition).

Nestlé appealed the decision to the English High Court and Mr Justice Arnold stayed the appeal proceedings pending a ruling from the CJEU on how acquired distinctiveness is to be assessed in relation to trade mark applications for shape marks. The following specific questions were raised:

  1. In order to acquire distinctiveness, is it sufficient that the average consumer recognises the shape and associates it with Nestlé (the applicant), as opposed to any other trade marks which may also be present, as indicating the origin of the goods?
  2. Where a shape consists of a number of essential features, one of which falls within the "nature of the goods" restriction and two of which fall within the "necessary to obtain a technical result" restriction, is registration of that shape as a trade mark precluded even though neither exclusion covers all of the essential features of the product?
  3. Should the prohibition be interpreted as precluding registration of shapes which are necessary to obtain a technical result with regard to the manner in which the goods are manufactured as opposed to the manner in which the goods function?

The judgement of CJEU in relation to the specific questions raised by Mr. Justice Arnold can be summarised as follows:

  1. For the KitKat shape mark to be registrable as a trade mark, Nestle must be able to show that the relevant consumer can easily identify the goods as originating from that specific undertaking (i.e. Nestle) without any additional branding or packaging (either on the product or packaging around the product).
  2. With regards to the specific shape objections, the CJEU opined that it is only necessary for one of these grounds to apply for the trade mark application to be refused.
  3. If the shape of the trade mark is such that it is necessary to achieve a technical result, this should only apply where consumers relate this to the products function and not its manufacture.

The case was returned to the English High Court where Mr. Justice Arnold has now issued his ruling. In essence, Mr Justice Arnold has refused Nestlé's appeal and has ruled that the "KitKat" shape mark is not capable of registration in the UK. In his judgment, Mr Justice Arnold refused the arguments of Nestlé for the following reasons:

  • Nestlé had not promoted the chocolate bar's shape as one of its unique selling points and had distributed it in an opaque wrapping that did not reveal its design;
  • He specifically said "In these circumstances it seems likely that consumers rely only on the word mark KitKat and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KitKat (and therefore with Nestlé), but no more than that";
  • "Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails."
  • Therefore, the arguments from Nestlé that association (to the shape mark) is sufficient to demonstrate the acquisition of a distinctive character were deemed incorrect.
  • Despite the decision, Nestlé has indicated that it intends to further appeal this decision as they remain of the opinion that its iconic "four fingered bar" is well known by UK consumers and, as such, deserves to enjoy trade mark protection in the UK.

This decision appears to confirm the feeling that the courts are usually reluctant to allow manufacturers to obtain a monopoly (through a trade mark registration) for shape marks alone. Although the decision reinforces the opinion that consumers tend to be influenced by branding and packaging rather than the shape of the product alone, it must be noted that obtaining trade mark registration in the UK for a shape mark alone is not impossible (as the successful registrations for the Toblerone bar and Nestlé's own Walnut Whip will testify).

When a black cab is not a black cab (or is it?)

The question of whether a shape mark alone is inherently distinctive was also the primary issue in the recent case of London Taxi Company v Frazer-Nash.

In this case, LTC claimed that Frazer-Nash had intentionally copied the shape of its iconic "London black cab" and that the new "Metrocab" of Frazer-Nash was specifically designed to deceive both the London public and existing taxi drivers into thinking that this was and LTC taxi. As a result, LTC launched both trade mark infringement and passing off action in the UK courts based on its registered and unregistered rights in the shape of its "black cab".

Below is an image of the respective taxis in question, with the Frazer-Nash "Metrocab" on the left and the LTC "black cab" on the right:

In this case, Mr. Justice Arnold rejected all of the arguments by LTC and dismissed the infringement claims on a number of grounds, including that the shape marks (of the taxi) adds substantial value to the goods, one of the shape marks had not been put to genuine use in the UK for at least five years and that Frazer-Nash had not taken unfair advantage of LTC's registered trademarks.

Mr Justice Arnold also stated that the shape marks owned by LTC should not have been registered as they lack the required level of distinctiveness (being merely the shape of a taxi) and that they had not acquired a distinctive character through use of the marks. He also applied his reasoning in the recent KitKat case in that consumers did not use or identify the LTC taxi because of its shape, rather due to other branding such as the prominent "LTC" badge. Also, the may associate the shape of the taxi as originating from LTC, but this mere association is not enough as further branding is needed to fully allow the consumer to determine that the taxi originates from LTC and to distinguish their taxi from other such goods.

With regards to the passing off action, Mr Justice Arnold reaffirmed that it is very difficult to establish the necessary goodwill in a shape and that, in this instance, LTC had failed to show that the shape of their taxis had acquired a distinctive character which allowed the public to easily identify the overall shape as being an LTC taxi. As such, no goodwill could possibly accrue in the shape itself.

Mr Justice Arnold also commented that there was also no evidence of misrepresentation as Frazer-Nash had not intended to deceive the relevant consumer into thinking that its "Metrocab" came from the same source as the LTC taxis.

This decision reinforces the opinion that obtaining registered rights in shape marks, and enforcing such rights against third parties, remains highly problematic in the UK unless it can be shown that the shape itself has acquired a substantial level of distinctiveness through use which is not due to an association with any other branding on the goods in question.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.