(This article was written for Shelf Life. The original article was published on February 19, 2016 and can be viewed here.)

It is common knowledge that words, phrases and logos (such as Coca-Cola, ‘Have a break’ and the Nike swoosh) can be protected as registered trademarks in order to give exclusive rights to its owner. However it often comes as a surprise to brand owners that such protection can also be extended to three-dimentional (3D) shapes.  Trademark laws broadly allow shapes to be protected as registered trademarks, as long as the shape is not dictated solely by a functional feature of the underlying product. 3D shapes are therefore theoretically registrable as trademarks (although relatively difficult to register in Ireland and the United Kingdom without showing extensive use) and a good example would be Kraft Foods, which has managed to successfully trademark the Toblerone prism shape as a Community Trademark.

Unsurprisingly, this is a highly debated area of law and in recent times, a number of disputes have come before the courts of Europe, which offer some insight into whether 3D shapes can indeed be protected as trademarks.

Technical function

Lego Juris A/S, the Danish toy company, tried to trademark its red toy building brick. However, this was successfully challenged by Canadian competitor Mega Brands, Inc (maker of Mega Briks) in 2010 when the European Court of Justice ruled that “the Lego brick merely performs a technical function and cannot be registered as a trademark”. A similar decision had been reached in 2005 by the Supreme Court of Canada.

Interestingly, the shapes of Lego figurines have been successfully registered as trademarks – although this was challenged by a competitor, Best-Lock, which argued that the shape of Lego figurines also involved a technical function. In 2015, the General Court (of the EU) disagreed with Best Lock, stating that there are additional features to Lego figurines which did not have a technical function. Lego’s 3D figurine trademark registrations have happily been upheld in this instance.

Four-finger shape

Click here to view image.

Nestlé continues to innovate with its well-known KitKat bar, such as through the launch of KitKat Snap & Share last year. However Cadbury has objected to Nestlé’s bid to register its classic four-finger shape as a 3D trademark

The latest saga which kicked off in 2010 is between Nestlé and Cadbury. Swiss-based food giant Nestlé sought to register the four-finger shape of its KitKat bar as a 3D trademark in the UK. Cadbury (owned by Mondelez), the other confectionery titan, objected on numerous grounds including the fact that Nestle’s mark consisted of a functional shape – it results from the nature of moulded chocolate bars and the presence of breaking grooves is a feature which is necessary to achieve a technical result. (The chocolatiers have been battling over trademarks since Nestlé blocked Cadbury’s attempts to trademark the shade of purple used in the packaging of Dairy Milk). This matter was brought before the English High Court which referred a number of technical aspects of the case to the European courts. A ruling was handed down in January 2016 where the judge (taking his lead from the CJEU) held that Nestlé had not promoted the KitKat chocolate bar’s shape as one of its selling points and had distributed it in an opaque wrapping that did not reveal its design. “In these circumstances it seems likely that consumers rely only on the word KitKat… in order to identify the trade origin of the products. They associate the shape with KitKat (and therefore with Nestlé), but no more than that,” he said. Nestlé is planning to appeal this decision. Ironically, the four-finger KitKat, originally called Chocolate Crisp, was first sold in England in 1935. It subsequently became the KitKat Chocolate Crisp and after World War II, just KitKat. As such, the shape preceded the name.

In general, both shape and packaging would fall within the umbrella of 3D trademarks and are eligible for registration under trademark laws across Europe. However, it is important to bear in mind that such marks must fulfill the conditions of registrability, namely it must be distinctive and also not fall foul of the technical function requirement, which remains the most frequent ground of refusal of 3D trademarks (as is apparent from the case-law above).

Is a shape distinctive enough?

In practice, trademark offices throughout Europe have only allowed a relatively limited number of 3D trademark applications through. They generally appear to take the view that the average consumer does not identify products or manufacturers simply by shape or packaging. The closer the shape for which registration is sought resembles the natural shape used for such products, the less likely it is to be considered as distinctive enough to be registered as a trademark. The European courts appear to be equally cautious in their approach. For instance, naked 3D shapes seem to be viewed with a greater degree of suspicion than those which are filed along with additional features (such as graphical or word elements) to the 3D shape or packaging. This reluctance on the part of the trademark offices and the courts must stem from the fear that a trademark monopoly by way of 3D shapes could ultimately stifle legitimate competition.

The Nestlé/Cadbury saga is not yet over – and if on appeal the English courts ultimately allow registration of the 3D shape of the KitKat bar, this would give Nestlé a valuable monopoly and competitive advantage over other manufacturers of confectionery, which can technically last forever.