The recent decision of the Court of Justice of the European Union (CJEU) inSociété des Produits Nestlé SA v Cadbury UK Ltd (C-215/14) has left uncertainty as to how the CJEU will go on to determine the thorny issue of what constitutes a ‘registerable’ 3D trade mark.
It is immediately clear to me that the chocolate bar sitting on my desk is a KIT KAT, and that it originates from Nestlé. Why do I know this? Because it has the wrapper on! The critical test that the English and European courts have been determining is whether the average consumer would uniquely identify this particular chocolate bar as firstly being a KIT KAT, and secondly originating from a single source, namely Nestlé – if the wrapper is removed.
The on-going battle between Nestlé and Cadbury focuses in part upon the inherent ‘distinctive character’ of the trade mark that has been filed for the Nestlé product. Critical to the evaluation of this is whether the shape of the product (and hence the representation of the trade mark) is determined by the technical features that are required to give it ‘functionality’. If they do, then this takes the application away from one that should be allowed for trade mark protection into one that perhaps should have been filed for patent or design protection. In other words, it would be inappropriate for the Court to allow a perpetually renewable right to be granted.
Then there is another hurdle. If Nestlé had been able to establish that the shape escaped the ‘absolute’ prohibitions under Article 3 of the Trade Marks Directive then, they still had to establish that the trade mark had acquired a sufficiently high level of distinctiveness that the average consumer could uniquely identify its origin without needing any reference to a word mark or any other branding.
In the view of the CJEU, both hurdles have not yet been adequately jumped over in this particular case to allow the registration of the shape in the absence of any branding. The battle is not over yet though.
The case returns to the UK High Court, and Nestlé will have another ‘bite at the chocolate bar’ to establish the level of acquired distinctiveness that is deemed to be required. Whether they can do this remains to be seen. It has to be questioned that when companies diversify and roll out brand extensions such as ‘KIT KAT CHUNKY’ and ‘KIT KAT ice-cream’ does the consumer take their eye off the shape, and concentrate on the word mark and logo/label?
For now, the uncertainty continues as to what will be allowed protection as a 3D trade mark.
Interestingly, it looks as if Nestle slipped this one past Cadbury, in the UK in 2010….Do you know what it is?!…