24 January 2014

“In what circumstances can a trader secure a perpetual monopoly in the shape of a product by registering it as a trade mark?”  This was the judge’s opening summary of the issues raised by Nestlé's High Court appeal against a decision to refuse its application to register the four finger shape of its KIT KAT chocolate bar as a three-dimensional trade mark.  

The Application

Nestlé applied to register the three-dimensional sign in respect of goods in class 30, including chocolate products, confectionery, pastries, cakes and biscuits. Cadbury opposed the application.

A senior hearing officer of the UK Intellectual Property Office decided that the sign was precluded from registration for the goods applied for (except cakes and pastries) on the grounds that:

  • It was devoid of any distinctive character and had not acquired such a character, despite the very extensive use made of the shape; and also
  • The sign consisted exclusively of a shape:
    - which results from the nature of the goods themselves (ie the “slab” shape of moulded chocolate bars); and
    - which is necessary to obtain a technical result (ie the ability to break and eat fingers of the product).

The Appeal

Nestlé appealed and Cadbury cross appealed in respect of cakes and pastries.

In principle, the shape of a product can be registered as a trade mark.  “Surprisingly however”, the appeal judge observed, “certain aspects of the relevant law in this area remain unclear”.

In order to obtain clarity, the judge will refer questions on two issues to the Court of Justice of the European Union, prior to deciding the appeal. The exact wording of the questions has yet to be framed but they are, in essence:

1. Distinctive Character

When does a mark acquire a distinctive character through its use?

  • Is it sufficient to prove that a significant proportion of consumers would recognise the mark and associate it with the owner (so a consumer could  look at the shape and identify Nestlé as the manufacturer); or alternatively
  • Must it be proven that consumers rely upon the mark, and not any other marks on the goods, to indicate their origin?

Unusually, the judge gave his opinion on the correct approach, stating that it is the second, higher hurdle which must be overcome.

2. Nature of the goods/necessary to obtain a technical result

A trade mark cannot consist exclusively of a shape which either results from the nature of the goods or is necessary to obtain a particular technical result.  However:

  • If certain of the essential features of the shape result from the nature of the goods, while others are necessary to obtain a technical result (a 'hybrid finding') should registration still be refused?
  • Are shapes which are necessary to obtain a technical result connected to the way in which the goods are manufactured, rather than the manner in which they function, also barred from registration?

Again, the judge expressed a view, arguing that, yes, a hybrid finding should still prevent registration, as should the fact that the sign applied for is a shape necessary for manufacture.   

If the CJEU provides clear answers to these questions, the extent to which the shape of products, especially those which are sold wrapped in packaging, can truly function as trade marks will be much better defined.

The authors, Hannah Braye and Chris Morris, are part of Burges Salmon's Intellectual Property team, led by Jeremy Dickerson.

Key contact

Jeremy Dickerson

Jeremy Dickerson Partner

  • Head of International 
  • Head of Intellectual Property, Media and Sport
  • Defamation and Reputation Management

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