The European Court of Justice (ECJ) recently gave a preliminary ruling on whether the 3D shape of the four fingered KitKat is capable of being trade marked.

Background

Section 3 of the Trade Marks Act 1994 (TMA) states that a trade mark must not be registered if the mark:

  • is devoid of distinctive character (section 3(1)(b), implementing Article 3(1)(b) of the Trade Marks Directive (2008/95/EC) (Directive)). i.e you cannot trade mark APPLE for apples, but it was capable of registration in relation to computer software and mobile technology;
  • consists exclusively of the shape which results from the nature of the goods themselves (section 3(2)(a), implementing Article 3(1)(e)(i) of the Directive). i.e a banana;
  • consists exclusively of the shape of goods which is necessary to obtain a technical result (section 3(2)(b), implementing Article 3(1)(e)(ii) of the Directive). i.e a screw cap on a bottle;

In 2013, the Intellectual Property office (IPO) rejected Nestle’s application to register the four-fingered chocolate bar as a three-dimensional trade mark. Cadbury also opposed the application, arguing that the shape alone was not distinctive enough to associate it with KitKat. There is also a four fingered bar called Kvikk Lunsj, (translating as “quick lunch”) which was launched in the 1930s in Norway. The IPO decided that the chocolate bar was not capable of registration on the grounds that the mark was devoid of distinctive character, and consisted exclusively of the shape which was necessary to obtain a technical result, in breach of sections 3(1)(b) and 3(2)(b) of the TMA.

Nestle appealed the IPO’s decision and in January last year, the High Court referred a number of technical questions to the ECJ which we now have the answers to:

Question 1

In order for a trade mark to acquire distinctive character, would it be enough for persons to recognise the four-finger bar and associate it with KitKat; or must KitKat prove that persons rely on the four-finger bar (and not the KitKat logo on the bar) as an indication that it is a KitKat?

ECJ Decision

The essential function of a trade mark is to allow the public to determine the origin of the goods, distinguishable from other goods. In order to evidence acquired distinctiveness, the applicant must show that the relevant public perceives the mark as exclusively designating origin. In other words, would you look at a four- finger chocolate bar and straight away think “KitKat” in the absence of the KitKat logo. The applicant must prove that that the mark is capable of registration in isolation, if that mark is used in conjunction with a registered mark.

Question 2

If a KitKat has several features where some may be a result of the nature of the goods themselves, and other features are necessary to obtain a technical result, is registration of the KitKat shape prevented by Article 3(1)(e)(i) or 3(1)(e)(ii) or by both articles?

ECJ Decision

The ECJ held that a shape is not capable of registration if it has a mixture of features that contravene different provisions of Article 3(1)(e) of the Directive, as long as at least one of the objections applies fully to the shape. So an application may not be refused where none of the grounds apply, but only one ground needs to be fully applicable for registration to be rejected.

Question 3

Can an application be refused where the four-finger shape of the KitKat relates to the way it is manufactured as opposed to the manner in which the bar functions?

ECJ Decision

With regards to the “necessary to achieve a technical result” section of Article 3(1)(e)(ii), the ECJ held that this relates only to the functionality of the goods and not the manner in which they are manufactured. The ECJ reached their decision by giving the provision a literal interpretation which refers only to a “technical result”. They also looked at the objective of the legislation, which is to prevent a registrant gaining a monopoly over the functionality of a product.

The “technical result” provision which does not apply to the manner of manufacture will be welcomed by those wishing to trade mark their 3D shapes. Interestingly, the ECJ’s decision was contrary to that of the Attorney General’s opinion in June 2015, who recommended that the ECJ should interpret the provision to include the way goods are manufactured.

We imagine that Nestle will now have an uphill climb to register the four-finger KitKat, as they must now show that the public would recognise the chocolate bar by its unpackaged shape alone in order to prove acquired distinctiveness. This will be difficult to prove as the bar contains the KitKat trade mark on each finger. However, Nestle has a track record when it comes to registering difficult trade marks. “Have a break” was finally registered in 2006 after a 40 year battle.

It will be interesting to see how KitKat react to this ruling and no doubt Cadbury will be keeping a watchful eye. The feud between the two chocolate giants started when Cadbury trade marked their famous colour purple. Nestle objected to the registration resulting in a long legal dispute. The Court of Appeal held that Cadbury’s purple was not capable of registration and did not allow an appeal to the Supreme Court.