Summary

The Court of Justice of the European Union's (CJEU) answers, in a referral to it by the UK High Court, emphasise the public interest basis of provisions preventing the registration of certain shape marks so that exclusive and permanent rights are not created in those shapes through the use of trade mark law.

Nestlé v Cadbury

The questions arose in case C-215/14 Société des Produits Nestlé SA v Cadbury UK Ltd which relates to Cadbury's challenge to Nestlé’s application for trade mark registration of the chocolate bar shown below. Trade mark registration was sought for the shape per se, without the words Kit Kat.

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Applicants keen to protect product shapes as trade marks need to be careful that the shape is not the usual shape of the goods and is not the shape that would be needed by competitors for their goods to accomplish a technical function. These provisions seek to avoid the creation of monopolies on technical solutions or functional characteristics of products that consumers are likely to look for in products offered by other manufacturers.

As regards the bar to registration of trade marks which consist exclusively of the shape of goods necessary to obtain a technical result, the CJEU has explained that the technical result needs to be viewed from the perspective of the consumer, who sees or interacts with the manner in which the shape functions. The consumer or user will seek this technical function in the goods of other manufacturers. The method of manufacturing is not relevant to the discussion of whether the technical result is caught out by the public interest provision.

The answers also clarified that, where owners assert that a trade mark has acquired distinctiveness by the use that has been made of that trade mark (on the basis of which an otherwise non-distinctive trade could be entitled to registration), the owner will have to prove that the use has been made in such a manner that it enables a consumer to identify the origin of goods on the basis of that mark alone, irrespective of whether other trade marks are also used with the trade mark in question. This is especially important in those cases where weak, subsidiary or secondary trade marks, used typically in conjunction with other more distinctive trade marks of the applicant, are sought to be registered in their own right by the applicant after some period of use. This could become a heavy burden to discharge in practice and serves as an important reminder that the use of a sign in marketing materials and in actual use must be very carefully planned if there is a long term interest in protecting a secondary and inherently weak trade mark. The manner of actual use of the four fingered chocolate bar by Nestlé is shown overleaf. In actual use the words Kit Kat appear on the chocolate fingers.

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The CJEU also reiterated the positon that, if a shape mark falls foul of the registration criteria, on the basis that the shape is the ordinary shape or is one that serves a technical function, no amount of use of the 'distinctive type' will allow it to be registered or save its registration.

Conclusion

The UK High Court will apply the Court of Justice of the European Union's guidance to the facts in this case and issue its decision in time. What does this mean for Nestlé? Is it going to be able to secure registration of its trade mark and rely upon it to stop competitors from bringing four fingered chocolates to the market? We will report once a decision is issued but for now we are going to have a short break while the High Court decides the case.