Under the Trade Mark Directive [1], a shape that is capable of being represented graphically may qualify for trade mark protection if it is capable of distinguishing the proprietor's goods or services from those of its competitors. However, where the shape is borne out of the nature of the product that it is, or takes on a form that is necessary to obtain a technical result, then an application for registration must be refused.

The Court of Justice of the European Union (CJEU) ruled in September [2] that the shape of a Kit Kat bar is unlikely to be protectable as a trade mark. 

Nestlé had applied unsuccessfully for registration of the shape of the four-fingered Kit Kat bars in the UK. Nestlé appealed to the High Court and the case was eventually sent to the CJEU for a ruling. At issue was the grooves in the Kit Kat bar which enable the consumer to separate the individual wafer finger.

Nestlé succeeded to some extents on the arguments concerning whether the shape resulted from the product itself and whether the shape was necessary to achieve a technical result. The CJEU ruled that for the exclusion based on achievement of a technical result to apply, the exclusion had to relate to the whole product and not just elements of it. This is helpful to Nestlé, as the UK Intellectual Property Office (UK IPO) had determined that the Kit Kat bar comprised three essential features, namely the shape of moulded chocolate bars, the breaking of the bars and the portion size. The CJEU also ruled that the technical result referred to in the exclusion was limited to the way in which the goods functioned and not the manner in which they were manufactured.

However, the CJEU concluded that, for the purposes of the registration of the mark, the applicant must demonstrate that that mark alone, as opposed to any other trade mark which may also be present (such as a logo on the packaging) identifies the origin of the goods. This reflects the IPO ruling that the shape of the Kit Kat bars was not distinctive and failed to call to mind the Nestlé brand as there were similar shaped products on the UK market.

The case is now remitted back to the High Court although the expectation must be that, applying the CJEU ruling, Nestlé's appeal against the UK IPO decision will be refused.

The CJEU ruling shows how difficult it is to win trade mark protection for a shape. Most goods are not solely identifiable from their shape, but rely on, for example, their packaging or other branding to make the product distinctive. 

There is however, one notable exception in the chocolate bar context: Toblerone has successfully registered its triangular prism shape.