In January 2016 I wrote a short piece about the difficulties trade mark owners face in trying to secure, by way of a UK registered trade mark, protection against a competitor copying the 'shape' of their goods.

I explained that registering the shape of a product as UK trade mark, let alone subsequently successfully enforcing that registration against a third party infringer, is not an easy task. To illustrate the point, I discussed two (then) recent cases, one involving Nestlé's attempt to register the three dimensional shape of its famous four-fingered "KitKat" chocolate covered biscuit as a UK registered trade mark, omitting the words "KitKat" (which are embossed on each finger when the product is sold). See below:

I highlighted the fact that, despite Nestlé's survey evidence showing that a significant proportion of the relevant UK public recognised the 4 fingered shape as being a "KitKat", the English High Court still held that Nestlé had failed to prove that the shape had, through extensive use over many years, come to be seen and regarded by average UK consumers 'as a trade mark' (i.e. as indicating the commercial origin of a chocolate covered biscuit having that shape). The Court held that Nestlé had only proved that the public recognised the shape and associated it with KitKat products. They had not proven that such persons would rely upon the shape as denoting the origin of the goods, if it were used on its own.

In light of the English Court's decision, I suggested that 'shape' brand owners ought to consider registering their shape marks as EU trade marks, rather than UK trade marks. This is because, historically, the EU IPO has been regarded by some as perhaps being more lenient in registering such marks.

Indeed, it turns out that Nestlé had already done just that. Back in 2002 it applied (successfully) to register the same three dimensional shape (i.e. of its famous four-fingered "KitKat" chocolate covered biscuit) as an EU trade mark. However, in 2007 Cadbury's (now Mondelez) applied to invalidate the registration, arguing that the shape would not be seen by average EU consumers 'as a trade mark'.

Last month, the General Court of the EU handed down its decision in the case. The General Court did not agree with the English High Court that Nestlé had to prove that the public relied upon the shape as denoting the commercial origin of the goods. All that it was required to do was to show that the shape, when used independently of its packaging or of any reference to the word mark "KitKat", served to identify the product as being (without any possibility of confusion) a 4 fingered "KitKat". Further, it was not necessary for the shape to appear on the packaging for the product, or to be visible at the time of sale. Visible use of the shape in advertisements and when the product was consumed would suffice to enable the shape to acquire distinctive character through use and thus come to be seen and regarded by average consumers 'as a trade mark' (i.e. as indicating the commercial origin of chocolate covered biscuits having that shape). Thus, the decision could be regarded as good news for 'shape' brand owners.

Unfortunately, that was not the end of the story. Despite Nestlé filing evidence that demonstrated that the shape in question had come to be seen and regarded 'as a trade mark' in most of the countries forming part of the EU (and which countries represented almost 90% of the population of the EU), the Court held that the evidence filed did not demonstrate that the shape had acquired distinctive character (and thus had come to be seen and regarded 'as a trade mark') in all countries of the EU. In particular, the evidence did not demonstrate that the shape was regarded 'as a trade mark' in Belgium, Ireland, Greece or Poland.

The Court held that for an inherently non-distinctive shape to be registerable as an EU trade mark, the brand owner has to demonstrate that a significant proportion of the relevant public in each and every one of the (now 27) EU member states sees and regards the shape 'as a trade mark'. In the event that the evidence submitted does not cover part of the EU, even a part which is not substantial, or consists of only one member state, it cannot be held that the shape has come to be seen and regarded 'as a trade mark' and, thus, it cannot be registered as an EU trade mark. A lack of recognition of the shape as an indication of commercial origin in one part of the EU cannot be offset by a higher level of awareness in another part of the EU.

The effect of this decision is that (unless the shape is inherently distinctive - and most are not) it will now become a very expensive exercise for a 'shape' brand owner to register its shape as an EU trade mark (as it will have to demonstrate that in each and every one of the 27 countries it will be seen and regarded 'as a trade mark'). More pertinently, it will also become much more difficult evidentially, as the brand owner will need to prove that, in each and every one of the 27 countries, the shape will be seen and regarded 'as a trade mark' - and that will probably prove impossible for many 'shape' marks.