Global Intellectual Property
CJEU to issue guidance on registrability of 3D shape marks
The UK High Court has referred a number of questions to the CJEU regarding the registrability of 3D shape marks, in particular concerning the assessment of acquired distinctive character and the absolute grounds of refusal applying to shapes which result from the nature of the goods, or which have a technical effect.
The reference stems from Nestle's application to register the shape of its KIT KAT bar. The UK Intellectual Property Office last year rejected the shape in relation to various confectionery produces except cakes and pastries on the basis that:
1. It was devoid of distinctive character. Even though a significant proportion of the public recognised the shape as a KIT KAT bar, it had not acquired distinctive character as the relevant public did not rely on that shape to identify the origin of the goods, but instead looked to the word mark and other pictorial elements as origin indicators; and
2. The presence of the breaking grooves themselves and their angle/depth were necessary to achieve a technical result i.e. to permit the product to be broken up for consumption. Furthermore, the basic rectangular 'slab' shape resulted from the nature of moulded chocolate bars and the number of 'fingers' was determined by the desired portion size. Ultimately, the shape mark was rejected as being necessary to obtain a technical result.
Nestle has appealed this decision to the High Court, which has now referred the following questions to the CJEU (precise wording of the questions yet to be finalised):
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 the Trade Marks Directive (2008/95), 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?
2. 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 the Directive?
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2 Intellectual Property Client Alert February 2014
3. Should Article 3(1)(e)(ii) of the Directive 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 addition, Arnold J considered that the hearing officer should have also concluded that the mark was devoid of distinctive character in relation to "cakes and pastries", and that with regard to the absolute grounds of refusal relating to shape marks, there was no basis to differentiate between "cakes and pastries" and the other confectionery and bakery-type goods rejected.