The world of chocolate may appear sweet from the outside, but the recent UK Court of Appeal (CoA) judgment in Nestlé v Cadbury may leave a bad taste in the mouths of any traders and manufacturers hoping to register shapes as trade mark registrations. In this latest instalment of the ‘chocolate wars’ between confectionery heavyweights Nestlé and Cadbury, Lord Justice Kitchin rejected Nestlé’s appeal against the decision of the High Court and upheld the ruling that the shape of the well-known KitKat chocolate bar cannot be registrable as a trade mark, finding that Nestlé had failed to prove that the shape had acquired distinctive character.

The current chapter in the ongoing ‘chocolate wars’, discussed in our previous article, can be traced back to Nestlé’s application to register the shape of its four finger chocolate bar as a UK trade mark for a number of goods in Class 30, including chocolate products, cakes and biscuits. Cadbury was successful in UKIPO opposition proceedings filed against the application on the grounds that the shape of the trade mark was a feature resulting from the nature of the goods, and that the shape was necessary to achieve a technical result, allowing the consumer to break the bar into separate fingers.

Despite adducing evidence that the public recognised the shape as a KitKat, Nestlé failed to convince the UKIPO Hearing Officer, and the High Court in the subsequent appeal, that through the extensive use made of the shape over many years, the average consumer had come to regard the shape ‘as a trade mark’. As Nestlé had not proved that the shape had come to be recognised as a guarantee of the commercial origin of the chocolate bar, the High Court ruled that it had not acquired the necessary distinctive character and therefore could not be registered.

The Court of Appeal’s decision

Appealing the High Court decision to the CoA, Nestlé contended that a substantial proportion of the relevant consumers, when presented with the three-dimensional shape, recognised it as a KitKat, and understood the shape to indicate a specific product originating from a single source. The CoA confirmed that the relevant test, for determining whether an inherently non-distinctive mark has acquired distinctive character through use, is that a significant proportion of the relevant class of consumers perceive goods designated by the mark as originating from a particular undertaking, so that the mark has come to act as a ‘badge of origin’ for the goods in question.

Applying this test to the KitKat shape, the CoA found that Nestlé had not been able to prove that the shape of the KitKat itself, and the shape alone, had come to be perceived as a trade mark by a significant proportion of the relevant class of consumers. Nestlé had only demonstrated, in the eyes of the Court, that the average consumer may recognise the shape as a KitKat and may associate it with goods made by a particular undertaking, and this was not sufficient to find that the shape had acquired a distinctive character. Lord Justice Floyd offered a useful visualisation of the test: ‘I have found it helpful to have in mind a basket of unwrapped and otherwise unmarked chocolate bars, in the shape of the mark applied for, available for selection in a shop or supermarket. For there to be acquired distinctiveness, the consumer must perceive these goods as being KitKats, or as originating from the people who make KitKats, and not from others. A perception that they look like KitKats is not enough’.

The decision of the Court of Appeal once again confirms that it is particularly difficult for traders or manufacturers to register a shape as a trade mark, and that the Courts are reluctant to grant registrations of shapes alone. This is because consumers are more likely to perceive a shape to be a feature of the goods, rather than an indicator of the origin of the goods themselves, and will therefore usually rely on the branding and packaging of the goods to determine their origin. Although it is not impossible to obtain trade mark registration for shape marks in the UK, Nestlé v Cadbury once again demonstrates that the threshold for proving that a shape has acquired the pre-requisite distinctive character for protection is a difficult one to reach.