Fingers Crossed: Is The Shape Of The KIT-KAT Bar Registrable As A Trade Mark?

It has long been possible to seek the registration of (inter alia) "the shape of goods or of their packaging" as a trade mark both in the UK and in the rest of the European Union. Manufacturers have made good use of this entitlement over the past two decades to secure the registration of a wide range of three-dimensional (3-D) marks. Yet the confectionery industry has struggled to take advantage of this entitlement. Thus, in the last few years, Mars, Lindt and Storck have all failed in their respective attempts to register the shape of their confectionery as trade marks.

Now Nestlé has become the latest to be disappointed, for, in recent judgments handed down by British and EU courts, it failed to secure rulings that the shape of its well-known four-fingered KIT-KAT bar was a valid trade mark registration. We shall briefly review these rulings, and explain why Nestlé got its fingers so badly burnt.

THE UNITED KINGDOM

The background

In 2010 Nestlé applied to the United Kingdom Intellectual Property Office (UKIPO) to register as a UK trade mark for chocolate and a range of other Class 30 goods a 3-D sign consisting of four trapezoidal bars aligned on a rectangular base (the Shape). Its competitor Cadburys1 objected to the entire application on grounds of non-distinctiveness and lack of technical effect, as a result of which the UKIPO rejected most of the application. Both parties then appealed to the High Court of Justice, which referred to the Court of Justice of the European Union (CJEU) a series of questions for a preliminary ruling.

The CJEU handed down its ruling in September 20152, which was then applied by Arnold J in the High Court of Justice in January 2016 (the Decision)3.

The decision

Both of the principal issues in suit related to Section 3 ("Absolute grounds for refusal of registration") of the Trade Marks Act 1994 (the Act). The major issue was whether or not the mark was "devoid of any distinctive character"4 and, if so, whether that prohibition should be disregarded if the trade mark had become distinctive in relation to the goods for which registration had been requested in consequence of the use which had been made of it. The other, and minor, issue was whether the mark was unregistrable on the grounds that it consisted exclusively of the shape of goods which was necessary to obtain a technical result.5 We shall discuss each of these issues below.

Inherent distinctiveness?

EU jurisprudence recognises that the task of...