Nestlé’s Attempt To Trade Mark Kit Kat Shape Suffers Potentially Devastating Blow
Monday 22 June 2015 @ 12.08 p.m. | IP & Media
Nestlé’s attempt to trade mark the four-fingered shape of their “Kit Kat” has suffered a potentially devastating blow, after the advocate general of the European Court of Justice (CJEU) issued an opinion rejecting the company’s arguments. While the opinion is not binding, The Guardian has reported that the advocate general’s opinion is “almost always followed” by the CJEU.
Nestlé is arguing that the physical form of the Kit Kat bar has acquired the requisite distinctiveness over time. According to the BBC, the four-fingered shape was first sold in 1935 under the name “Chocolate Crisp”, so the shape in fact pre-dates the name. In their submissions to the courts, Nestlé have been citing a study that found 90% of people shown a picture of the bar without its wrapper or any branding identified it as a Kit Kat.
Novel trade marks have been the catalyst for several high stakes battles between the world’s biggest confectionary companies. One of the most well-known examples is Cadbury’s lengthy attempt to protect Pantone 2658C, a particular shade of purple used in its Dairy Milk bars. Initially accepted as a mark in the UK, Nestlé successfully had it overturned in the Court of Appeal in 2013. In Australia, Cadbury tried to argue that Darrell Lea’s use of the colour purple amounted to misleading or deceptive conduct, but were ultimately unsuccessful.
Sharon Daboul, a trademark attorney from EIP Europe, told The Guardian that ‘[i]n theory, the shapes of chocolate bars and other products should not be more difficult to trademark than their logos or names.’ She pointed out that Toblerone has managed to successfully trade mark their “zig zag prism” shape. However, she said that in practice, it can be very hard to prove that consumers look at the shape of the product rather than the label.
The Advocate General’s Opinion
The judgment of the advocate general focused on three questions referred by the UK Courts:
- In order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of [the Trade Marks Directive], 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 consider 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?
- 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 Trade Marks Directive]?
- Should Article 3(1)(e)(ii) of [the Trade Marks 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?’
The Advocate General found that in answer to the first question:
“it is not sufficient for the applicant for registration to prove that the relevant class of persons recognises the trade mark in respect of which registration is sought and associates it with the applicant’s goods or services. He must prove that only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services concerned. [at 55]”
In relation to the second and third questions, he also found the articles in question would also preclude registration of the shapes in question.
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