CJEU setback for Nestle in Kitkat trade mark dispute
Nestle will not be able to trademark the shape of its four-finger KitKat bar in the UK unless it can demonstrate that the public rely on the shape alone to identify the product, according to a ruling yesterday from the Court of Justice of the European Union.
Judges in the Luxembourg court were giving their ruling in the dispute between Nestle and rivals Cadbury, which objected to Nestle's attempt to trademark the four finger bar under its shape alone. Nestle claimed that the shape of the bar, first marketed in 1935, had become almost completely associated by the public with Kitkats. It did not attempt to trademark the two finger version of the bar.
The Case was referred by the English High Court on questions seeking to clarify what was necessary to establish that a mark had acquired a distinctive character following use made of it, and when the exclusion provision in article 3 of the 2008 Trade Mark Directive should be taken to apply.
In its ruling the court said the second question should be considered first. This precluded registration of signs which consist exclusively of the shape which results from the nature of the goods themselves; the shape of goods which is necessary to obtain a technical result; and the shape which gives substantial value to the goods. If any one of these criteria was satisfied in the sense of being "fully applicable", a sign consisting exclusively of the shape of goods could not be registered as a trade mark. However it would not be enough for the exclusion to apply if all three were partially satisfied.
Signs consisting exclusively of the shape of goods "which is necessary to obtain a technical result", had to be interpreted as referring only to the manner in which the goods at issue functioned, and not to the manner in which they were manufactured.
On the first question, the court concluded that regardless of whether a sign was used as part of a registered trade mark or in conjunction with the registered trade mark, "the fundamental condition is that, as a consequence of that use, the sign for which registration as a trade mark is sought may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking... for the purposes of the registration of the mark itself, the trade mark applicant must prove that that mark alone, as opposed to any other trade mark which may also be present, identifies the particular undertaking from which the goods originate".
The case will now return to the High Court to apply the ruling, with intellectual property lawyers predicting that that the court would not alow it to register the shape alone. The bars are also branded with the Kitkat name and part of the logo. a final decision.