Last summer we reported on the fact that Cadbury had successfully opposed a UK trade mark application by Nestlé for the shape of their KIT KAT four fingered chocolate bar.  The opposition was filed on the basis that the mark applied for consisted exclusively of the shape of the goods which was necessary to obtain a technical result and also, the shape of the product was devoid of distinctive character – see Nestlé would just like the UK IPO to give them a break 

As we predicted, Nestlé appealed this decision and Mr Justice Arnold has decided that it is necessary to seek clarification of the law from the Court of Justice of the European Union (CJEU) in order to determine the appeal.

The questions referred to the CJEU are as follows:

  1. “In order to establish that a trade mark has acquired a distinctive character following the use that had been made of it within the meaning of Article 3(3) of Directive 2008/95/EC, is it sufficient for the applicant for registration to prove that at the relevant date 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 be asked who marketed goods bearing that mark, they would identify the applicant; or must the applicant 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?”

In referring this question, Mr Justice Arnold commented that in his opinion, the correct answer to the question is that “the applicant must prove that a significant proportion of the relevant class of persons rely upon the trade mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods”

  1. “Where a shape consists of three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, is registration of that shape as a trade mark precluded by Article 3(1)(e)(i) and/or (ii) of Directive 2008/95/EC?”
  2. “Should Article 3(1)(e)(ii) of Directive 2008/95/EC 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?”

In referring questions two and three, Mr Justice Arnold commented that in his opinion, both questions should be answered in the affirmative.  

What’s next?

In the battle of the bars, I think in this case, Cadbury will come out on top and Nestlé’s appeal will fail. 

With respect to the first question referred, as much as I think the consumer would recognise the shape of the Kit Kat bar, can a consumer honestly say that they relied on the shape of the product to make sure that they purchased a Kit Kat bar, as opposed to the Kit Kat name? 

With respect to the second and third questions, I would agree with Mr Justice Arnold’s opinion that both questions should be answered as yes.  Therefore, I doubt Nestlé are going to get the break they are after.