Since 2010, Nestlé has been seeking to register the shape of its Kit Kat chocolate bar as a trade mark.   The shape, which is barely changed since the 1930's, comprises four "fingers" which can be snapped apart.  

The registration was opposed on the grounds that the mark was devoid of inherent distinctive character, and the case has become a fascinating study of the limits of the registerability of shape marks in Europe.  Last year the UK High Court referred three questions to the CJEU (Case C-215/14), and yesterday Advocate-General Wathelet gave his opinion on the matter.  The opinion is not law, and the case now goes before the Court of Justice of the European Union (CJEU) for a final judgment.  However in most cases the CJEU follows the Advocate-General's opinion, and so it is likely that we will receive a Judgement in similar terms in the next few months.

Here are the raw Q&As - and our comments:

1. UK High Court Question: In order to establish that a trade mark has acquired distinctive character following the use that had been made of it, is it sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant; or must the applicant prove that a significant proportion of the relevant class of persons rely upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?  

A-G Opinion Answer: It is not sufficient for the applicant for registration to prove that the relevant class of persons recognises the trade mark in respect of which registration is sought and associates it with the applicant’s goods or services. He must prove that only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services at issue.

Comment:  An issue for Nestlé is that the chocolate on each finger was impressed with the Kit Kat logo.  That impression is what the A-G is referring to, when he says that Nestlé has to prove its reputation in the shape mark "as opposed to any other trade marks which may also be present".  So, Nestlé can only rely on the shape, and in its evidence has to show that the identification of the shape with Kit Kat is not impacted by any supporting marks, such as its brand name or logo.  The A-G then sets the bar pretty high:  Nestlé must show that the public identifies the shape alone with Kit Kat "without any possibility of confusion".  People seeing the shape might recognise it as the shape of a Kit Kat.  But would they think only Kit Kat?  Or might they identify the shape with Kit Kat and other confectionary?   If the latter, then in the A-G's opinion the shape is not registerable. 

2. UK High Court Question: Where a shape consists of three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, is registration of that shape as a trade mark precluded? 

A-G Opinion Answer: Registration of a shape is precluded where that shape has three essential features, one of which results from the nature of the goods themselves and the other two of which are necessary to obtain a technical result, provided that at least one of those grounds fully applies to that shape.

Comment:  Another issue for Nestlé is that the shape has a function.  The fingers are joined together but their shape means that they can be snapped apart to be eaten separately.  In the A-G's opinion, that "technical result" could prove fatal to registration.   

3. UK High Court Question: Is the registration precluded 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?’

A-G Opinion Answer: The registration is precluded of a shape which is necessary to obtain a technical result, not only with regard to the manner in which the goods function, but also with regard to the manner in which they are manufactured. 

Comment:  This question expands on the second question:  if technical aspects of a shape might be fatal to a registration, how about if the technical result lies in the manufacturing process, rather than being inherent in the goods themselves?  Or put another way, what happens if the product has to be that shape, because of the manufacturing process?  In that regard, it was noted that the angle of the sides of the product and the angle of the grooves were determined by a specific chocolate moulding process. In the A-G's opinion, again, the technical result of the manufacturing process could prove fatal to registration.   

If followed by the CJEU, the A-G's opinion will present Nestlé with an uphill struggle to obtain a trade mark registration for its Kit Kat chocolate bar.  Even if Nestlé were able to prove that consumers exclusively associate the "pure" shape applied for with its Kit Kat chocolate bar, getting around the objection based on technical or functional characteristics will be challenging. The reasoning behind this of course to ensure that no manufacturer could obtain a monopoly on technical solutions or functional characteristics of goods.