CJEU preliminary ruling on 3D shape marks - the Kit Kat chocolate bar case continues

By Ning-Ning Li


The CJEU has delivered its ruling on questions referred to it from the English High Court concerning the registrability of the 3D shape of a Kit Kat chocolate bar (Société des Produits Nestlé v Cadbury UK Ltd, C-215/14).

Nestlé applied to register the mark reproduced below in the UK for various chocolate and confectionery products in Class 30.

Cadbury opposed the registration on the basis of the provisions of the UK Trade Marks Act 1994 (which transposed Articles 3(1)(b), 3(1)(e)(i) and (ii), and 3(3) of the Directive). The examiner found the mark devoid of inherent distinctive character and that it had not acquired distinctive character through use. The examiner noted that the shape had three features:

  1. the basic rectangular slab shape;
  2. the presence, position and depth of the grooves running along the length of the bar; and
  3. the number of grooves which, together with the width of the bar, determined the number of 'fingers'.

The examiner concluded that feature (i) was a shape which resulted from the nature of the goods themselves and could not be registered, except in respect of 'cakes' and 'pastries' where it departed from the norms of the sector. Features (ii) and (iii) were necessary to obtain a technical result.

Nestlé appealed the decision to the High Court and Cadbury cross appealed ([2014] EWHC 16 (Ch)). In order to assess whether the examiner had erred in his application of the Trade Marks Act, the UK High Court decided to refer three questions to the CJEU:

The High Court asked whether Article 3(1)(e) must be interpreted as precluding registration as a trade mark of a shape where that shape contained three essential features, one resulting from the nature of the goods themselves and two features being necessary to obtain a technical result. The CJEU held that Article 3(1)(e) would prevent registration of such a shape, provided that at least one of the grounds for refusal of registration was fully applicable to that shape. The three grounds for refusal operated independently, so it was irrelevant whether a sign could be denied registration on the basis of a number of grounds for refusal.

The High Court asked whether Article 3(1)(e)(ii) must be interpreted as referring only to the manner in which the goods at issue functioned, or whether it also applied to their manner of manufacture. The CJEU concluded that Article 3(1)(e)(ii) only referred to the functioning of the goods, and did not apply to their manner of manufacture. On a literal interpretation, Article 3(1)(e)(ii) was restricted to the manner in which the goods functioned, since the technical result was the outcome of a particular method of manufacturing the shape in question. In addition, from the consumer's perspective, the manner in which the goods functioned was decisive and their manner of manufacture was not important.

Finally, the High Court asked whether in order to register a trade mark which had acquired a distinctive character following use within the meaning of Article 3(3), it was sufficient for the applicant to prove that (i) the relevant class of persons perceived the goods designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular company, or (ii) whether it is sufficient to prove that a significant proportion of the relevant class of persons recognised that mark and associated it with the applicant's goods. The CJEU held that the applicant must prove (i), i.e. they must show that that mark alone, as opposed to any other trade mark which may also be present (regardless of whether the use is as part of another registered mark or in conjunction with such a mark), identified the particular undertaking from which the goods originated.

This case will now return to the English High Court, which will give a decision based on the guidance provided in this CJEU decision. Although it remains to be seen how the English High Court will interpret the guidance, the CJEU has potentially made the hurdle for demonstrating acquired distinctive character through use more difficult by requiring the applicant to prove that the shape mark alone (without any influence from other trademarks used in conjunction with it) identifies the origin of the relevant goods.

This article is part of the 3rd edition of the Food Law Digest 2015.