The High Court has refused to register the shape of a three-dimensional trade mark in the form of a chocolate bar on the ground it had not acquired distinctiveness through use.
Under section 3 of the Trade Marks Act 1994 (1994 Act) 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))).
A trade mark will not be refused registration under sections 3(1)(b) to (d) of the 1994 Act if, before the date of application for registration, it has acquired a distinctive character as a result of use.
N applied to register in the UK a three-dimensional trade mark in the form of a four-fingered chocolate bar in relation to chocolate and biscuit-based goods, cakes and pastries. C opposed the application on the grounds that the mark was devoid of distinctive character.
The UK Intellectual Property Office (IPO) held that the trade mark was devoid of distinctive character and had not acquired a distinctive character in relation to all the goods covered by the application except cakes and pastries (www.practicallaw.com/1-617-5347).
N appealed. C cross-appealed against the decision to permit registration of the mark in relation to cakes and pastries.
The High Court held that the IPO had been wrong to find that the trade mark was inherently distinctive in relation to cakes and pastries. However, it referred questions relating to acquired distinctiveness to the European Court of Justice (ECJ). The ECJ was asked whether it was sufficient for the applicant to prove that a significant proportion of relevant persons recognise the mark and associate it with the applicant’s goods in the sense that if they were to consider who marketed the goods they would identify the applicant, or whether instead the applicant must prove that a significant proportion of persons rely upon the mark, as opposed to any other trade marks which may also be present as indicating the origin of the goods.
The ECJ ruled that an applicant for registration must prove that a significant proportion of the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company (www.practicallaw.com/8-618-8209)... It did not therefore answer the question in the terms in which it was referred to it. C and N disagreed on the effect of the ECJ’s ruling on acquired distinctiveness.
The court dismissed N’s appeal and allowed C’s cross-appeal. It held that, having failed to pass the ECJ’s test on acquired distinctiveness, the shape of the KIT KAT chocolate bar was not registrable as a trade mark.
The ECJ’s ruling was interpreted to mean that, to demonstrate that a sign had acquired distinctive character, the applicant must prove that, at the relevant date, a significant proportion of the relevant class of persons perceived the relevant goods or services as originating from a particular undertaking because of the sign in question as opposed to any other trade mark which might also be present.
It was legitimate for the court, when assessing whether the applicant had proved that a significant proportion of the relevant class of persons perceived the relevant goods or services as originating from a particular undertaking because of the sign in question, to consider whether those persons would rely on the sign as denoting the origin of the goods if it were used on its own.
Here, it was clear from the IPO’s reasoning that the perception of consumers had been evaluated at the relevant date in a way that was consistent with the ECJ’s ruling. The IPO’s assessment of the relevant factors, including the survey, was correct. An additional factor was that there were a number of similarly shaped products produced by other undertakings on the market and no evidence that consumers thought that those products were KIT KAT products. This was inconsistent with the trade mark having acquired a distinctive character.
The court noted that the ECJ had not directly answered the question referred to it but had instead reformulated it. So, this decision may be seen as expanding on the ECJ’s ruling on acquired distinctiveness by introducing a test based on whether the relevant consumer would rely on the mark for which registration was sought as a badge of origin. This was proposed in the original reference to the ECJ but the ECJ did not rule on it.
The court’s interpretation of the ECJ’s ruling that to show acquired distinctive character, consumers must perceive the goods or services as originating from a particular undertaking because of the sign is consistent with the ECJ’s ruling. However, the additional reliance-based test could suggest a higher threshold for acquired distinctiveness if interpreted as requiring consumers to have decided to buy goods in reliance on the mark, rather than that there will be reliance on the mark if consumers use it to distinguish between goods and services from different undertakings. The decision is likely to be appealed.
Case: Société Des Produits Nestlé SA v Cadbury UK Ltd  EWHC 50 (Ch).
First published in the March 2016 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.