The Advocate General (AG) has recommended that, in order to show acquired distinctiveness, it must be shown that the relevant public perceives the shape of a chocolate bar as a guarantee of origin rather than merely associating it with the goods.
Under section 3 of the Trade Marks Act 1994 (TMA) and Article 3 of the Trade Marks Directive (2008/95/EC), a trade mark must not be registered if it:
- Is devoid of distinctive character (section 3(1)(b); Article 3(1)(b)).
- Consists exclusively of the shape which results from the nature of the goods themselves (section 3(2)(a); Article 3(1)(e)(i)).
- Consists exclusively of the shape of goods which is necessary to obtain a technical result (section 3(2)(b); Article 3(1)(e)(ii)) (Article 3(1)(e)(ii)).
A trade mark will not be refused registration under sections 3(1)(b) to (d) of the TMA if, before the date of application for registration, it has acquired a distinctive character as a result of use.
C opposed N’s application to register its KIT KAT bar as a three-dimensional trade mark.
The Intellectual Property Office (IPO) rejected N’s application on the grounds that the mark was devoid of inherent distinctive character, either inherent or acquired through use, and consisted exclusively of the shape which was necessary to obtain a technical result. N appealed.
The High Court stayed the proceedings and referred questions to the European Court of Justice (ECJ) in relation to the registration of three-dimensional marks.
The AG’s opinion recommended that:
- In order to show acquired distinctiveness, it must be shown that the average consumer perceives the mark as a guarantee of origin rather than merely associating it with the goods. Although a sign might have acquired distinctive character as a component of, or in conjunction with, a registered word mark, it must be sufficiently distinctive in its own right. It is not enough to provide evidence only of combined use of the sign.
- The three grounds for refusal under Article 3(1)(e) must be considered independently and should not be applied in combination. However, Article 3(1)(e) precluded registration of a shape where that shape has three essential features, one of which results from the nature of the goods themselves and the other two of which are necessary to obtain a technical result, provided that at least one of those grounds fully applies to that shape.
- Article 3(1)(e)(ii) precluded registration of a shape which is necessary to obtain a technical result not only with regard to the manner in which the goods function, but also with regard to the manner in which they are manufactured. It was possible that the technical result might be obtainable only by means of a specific manufacturing process, such as the presence of grooves in the KIT KAT bar which enabled consumers to separate the wafer fingers easily, but were also determined by the method of manufacture. As the reason for the provision was to ensure that no single manufacturer could get a monopoly on technical solutions or functional characteristics of goods, it applied to both the manufacturing process and resulting technical function.
If this opinion is followed by the ECJ, it will be more difficult for N’s application to succeed. Chocolate bars consisting of several separable sticks are often shaped with sloping sides to enable them to fall easily out of the mould. This may rule out the registration of these shapes as trade marks on the ground that they result from the technicalities of the manufacturing process. This technical evidence may also make it difficult for N to show acquired distinctiveness on the basis that the average consumer recognises the chocolate bar to function as an exclusive indication of origin by its unpackaged shape alone, as opposed to in combination with the KIT KAT word mark.
Case: Société des Produits Nestlé SA v Cadbury UK Ltd C-215/14.
First published in the August 2015 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.