On September 16 the European Court of Justice, upon preliminary reference by the High Court of Justice, rendered a decision in the case C-215/14 on the registrability of shape marks. The proceedings involved the Société des Produits Nestlé SA and the Cadbury UK Ltd and concerned the eligibility for registration as a shape mark of the well-known Kit Kat chocolate bar.

According to the United Kingdom Intellectual Property Office, such bar does not comply with two different requirements for registrability set by Article 3 of Directive 2008/95: first of all, the Kit Kat bar did not acquire distinctive character through the use made of it, and, secondly, it is characterised by three shape features (basic rectangular shape, presence and position of the grooves, number of grooves which determines the number of ‘fingers’), the first of which results from the nature of the good itself and the second and third are necessary to obtain a technical result. In this context, the referring judge formulated three different questions, thereby creating an opportunity for the Court to clarify the rules governing the registrability of shape marks.

First of all, the Court recalled that the impediments enshrined in Article 3, paragraph 1, letter e) of the Directive (non- registrability of signs which consist exclusively of a shape resulting from the nature of the goods, a shape which is necessary to obtain a technical result or a shape which gives substantial value to the goods) are aimed at preventing the exclusive and permanent right conferred by the trademark from creating a monopoly over technical solutions or functional characteristics of goods, which are otherwise subject to a more limited protection. On this premise, the Court stated that the three impediments may only preclude registration if one of them is fully applicable to the shape in question; refusing registration on the basis of an impediment which was only partially established would run contrary to the rationale of the provision.

In answer to a further question, the Court also clarified that, for the purposes of the impediments under letter e), the shape of the goods must be necessary to obtain a technical result with regard to manner in which the goods function, and not to the manufacturing process.

Although the decision on the merits is deferred to the referring judge, such statements may significantly favour Nestlé, as only a determination that the combination of the three shape features of the Kit Kat bar (rectangular basis, presence and position of the grooves, number of grooves) results from the nature of the goods or is necessary to obtain a specific technical function would ground a finding of non-registrability.

Finally, the Court addressed the issue of the distinctive character acquired through the use made of the mark. The referring judge asked whether, for the proof of the distinctive character, it is sufficient to show that a significant part of the public associates the shape mark with the applicant, or whether it is necessary to show that the public recognises the origin of the product only on the basis of the shape mark, independently from other marks which may appear on the product. In the light of the essential function of trademarks to guarantee the possibility to identify the origin of products, the Court opted for the second choice, in line with its previous jurisprudence.

It remains to be seen, however, whether the well-known chocolate bar is capable of overcoming such an impediment, which is significantly stricter than the mere requirement of association between trademark and origin.