Back in October 2015, we reported the Court of Justice of the European Union’s (CJEU) preliminary ruling as to whether the 3D shape of the four fingered KitKat is capable of being trade marked. You can remind yourself of the story so far here. In essence, can the shape of the four-finger Kitkat be registered as a trade mark on the grounds that it has acquired distinctiveness through use? If so, what is required to prove that the Kitkat shape alone has acquired distinctiveness through use?

The High Court last week handed down their judgment in response to the CJEU decision. What makes Arnold J’s ruling interesting is his discussion about how the CJEU have perhaps wrongly interpreted his questions, which would have been translated into French and German for the CJEU. By way of a reminder, Arnold J had asked the CJEU whether evidentially, it was enough that an applicant show that the relevant class of persons recognise the mark and associate it with the applicant’s goods (which Nestlé argued), or whether the applicant must prove that a significant proportion of the relevant class of persons rely upon the mark (the four fingers), as opposed to any other trade marks which may be present (the Kitkat logo).

You will recall that the CJEU decided that in order for the mark to acquire distinctive character, Nestlé must prove that a significant proportion of the relevant class of persons would recognise the four finger bar as a Kitkat, solely on the shape of the bar (as opposed to the Kitkat logo which appears on each finger). It appears that the questions on association and reliability have been lost in translation and therefore we can empathise with Arnold J’s frustration as these important questions remain undiscussed. Arnold J stated that “if a referring court asks whether the answer to a question is A or B, the CJEU is perfectly entitled to say that the answer is neither A or B but C….the problem in the present case is that the CJEU has said that the answer is not A, but C. Since the Court has not explicitly addressed B, however, it is not clear whether C is different from B.” Arnold J then debated whether to refer the question again but concluded that the reference would not be materially different from the one handed down in October 2015.

Arnold J therefore applied the strict letter of the CJEU’s ruling and held that association is not enough to prove acquired distinctiveness and dismissed Nestlé’s appeal. Nestlé had failed to evidence acquired distinctiveness through use and therefore the 3D shape was not capable of registration.