Following the Tripp Trapp case – commented here – the Court of Justice of the EU (‘CJEU’) has recently issued another interesting decision on trademarks representing the shape of goods.

The questions were referred by the UK High Court in Nestlé’s vs Cadbury appeal concerning the refusal of Nestlè’s trade mark application to register the 3D shape of their Kit Kat chocolate bar (depicted below).

Click here to view image.

  • Absolute grounds for refusal

One of the questions referred was whether registration of the shape above  as a trademark is precluded by applying cumulatively the criteria set out in Article 3(1)(e) of the Directive 2008/95, considering that the shape of Kit Kat in respect of which registration was sought has three features: (i) the basic rectangular slab shape; (ii) the presence, position and depth of the grooves running along the length of the bar, and (iii) the number of grooves, which, together with the width of the bar, determine the number of ‘fingers’. The CJEU confirmed the opinion already expressed in the Tripp Trapp decision and held that the three grounds for refusal set out in Article 3(1)(e) operate independently of one another, that is to say, if any one of the criteria listed in that provision is satisfied, a sign consisting exclusively of the shape of goods cannot be registered as a trade mark. No matter  whether the sign in question could be denied registration on the basis of a number of grounds for refusal so long as any one of those grounds is fully applicable to that sign. A different interpretation – said the Court – would clearly run counter to the public interest objective underlying the application of the three grounds for refusal of registration set out in Article 3(1)(e) that is to prevent the exclusive and permanent right which a trade mark confers from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods (e.g. design).

  • Manufacturing process

With its second question, the referring Court asked the CJEU whether Article 3(1)(e)(ii) of Directive 2008/95 should be interpreted as precluding registration 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. The answer of the CJEU was easily “no”: the ground of refusal refers only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured.

  • Acquired distinctiveness

The third and trickiest question of the UK High Court  was whether in order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of Directive 2008/95, it is sufficient for the applicant for registration to prove that 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 whether the applicant must 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.

The point here was that the shape of Kit Kat (without its packaging) has remained almost entirely unchanged since 1935: four chocolate fingers, each embossed with the words ‘Kit Kat’ and with sections of the oval shape which form part of the logo. Whilst, the trade mark at issue omits the embossed words ‘Kit Kat’. So the question here was how should the referring court evaluate whether the mark at issue (with no Kit Kat logo, just the shape of the chocolate bar) has acquired distinctive character?

According to the CJEU, regardless of whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark, the fundamental condition  in order to obtain registration of a trade mark which has acquired a distinctive character is that, as a consequence of that use, the sign for which registration is sought may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark. The trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company.

It will be interesting to see how the UK High Court will apply the principles above to this specific case.