The Advocate General (AG) - the European lawyer who prepares opinions in advance of judgments by the EU’s highest court, the Court of Justice of the European Union (CJEU) - has recently handed down an opinion on the trade mark registrability of the four-finger shape of the Kit Kat chocolate bar. The reason: Nestlé filed a trade mark application in the UK to register a three-dimensional trade mark for the shape of its big-selling chocolate bar. The application was refused by UK authorities, notwithstanding the fact that Nestlé was able to produce a survey suggesting that 90% of the people in the UK automatically associate the shape with Kit Kat. Nestlé then appealed this refusal to the UK High Court and the UK court referred the matter to the CJEU for direction.

Shape trade marks are particularly tricky. Applications for registration tend to flounder on one or both of two grounds. The first ground is one that applies to all trade marks – non-distinctiveness. The second ground is peculiar to trade marks comprising shapes, configurations, colours or patterns. The South African Trade Marks Act, by way of example, says that a trade mark won’t be registrable if it consists exclusively of a shape that’s necessary to obtain a technical result. The four-finger chocolate shape trade mark has struggled with both grounds, and the ‘technical result objection’ itself seems to have two sides to it, with some tribunals saying that the technical result is the fact that it’s easier for consumers to break the bar up, and others saying that it relates to the manufacturing process, in that it eases the release of the product from the mould.

The AG took the view that the shape of the Kit Kat bar cannot be validly registered as a trade mark. Both grounds seemed to have played a role in the decision. On the issue of distinctiveness, the AG said that there may be general recognition of the shape, but this does not mean that consumers perceive it as a trade mark. This ties in with the general thinking of the European trade mark authorities, which is although a shape can be protected as a trade mark in the same way that a word or logo can, the big difference with shapes is that consumers generally do not perceive them as indicators of trade origin, so not only do you need to prove extensive use, but you must also show that the shape differs significantly from the norm. On the issue of technical result, the AG made the point that this exclusion applies to both the manner in which the goods function, and the manner in which they are manufactured. We’ll have to wait and see whether the CJEU adopts the opinion, but it’s fair to say that most AG opinions are followed.

Shape trade marks tend to be controversial, and it’s no coincidence that a survey conducted by the publication World Intellectual Property Review (WIPR) suggests that 60% of trade mark lawyers feel the AG’s opinion is wrong, with some respondents claiming that the four-finger shape has developed a ‘secondary meaning’, and others saying that it is ‘synonymous’ with Kit Kat. And to give this some more context, it’s worth noting that Mondelez (Cadbury), the company that opposed Nestlé's trade mark application, itself owns a Community Trade Mark Registration for the triangular shape of the Toblerone chocolate.

The Kit Kat opinion is of particular interest to us here in South Africa since the South African Supreme Court of Appeal (SCA) recently ruled on a case that involved Nestlé’s South African trade mark registration for the four-finger shape of the Kit Kat bar. The SCA held that the registration was valid as a result of its extremely extensive use. The court also held that the trade mark did not consist exclusively of a shape that’s necessary to obtain a technical result, although the shape did have functional features relating to the release of the chocolate from the mould, it also had non-functional features, which meant that it didn’t come within the scope of the prohibition. The court went on to explain that the technical result prohibition exists to ‘prevent trade mark protection from granting its proprietor a monopoly on technical solutions, or functional characteristics of a product which a user is likely to seek in the product of competitors.’ 

It’s fair to say that in South Africa, if a party can provide extensive evidence of use of a shape as a trade mark, trade mark registration could be secured, while the position in Europe is not as promising.

It’s worth remembering that trade mark registration is not the only option when it comes to protecting product shapes. Indeed, registered design law has traditionally been the avenue for product shape protection. Registered design law offers protection for shapes that are both aesthetic and functional - in the case of an aesthetic design protection is available for up to 15 years, and in the case of a functional design the limit is 10 years. With registered designs distinctiveness is not the issue, but rather novelty. Registered design protection is therefore available for designs that are new rather than designs that are associated with a particular company or product. The two forms of protection can, of course, be combined, you get a registered design for a shape that’s new, and before the registration expires you get a trade mark registration on the basis of the distinctiveness that has been built up.

Product shape protection is complex, but it is certainly worth having.