The Court of Appeal has confirmed the invalidity of a three-dimensional chocolate bar trade mark.
A trade mark will be refused registration if it is devoid of distinctive character and the mark has not acquired distinctiveness through use in the marketplace (section 3(1), Trade Marks Act 1994) (section 3(1)).
Distinctive character can be acquired through use of a trade mark as part of, or in conjunction with, a registered trade mark. It is sufficient to show that, as a result of that use, the relevant class of persons perceived the product, designated exclusively by the mark applied for, as originating from a given undertaking (Société des Produits Nestlé SA v Mars UK Lt, www.practicallaw.com/9-201-0682).
The test for assessing whether an inherently non-distinctive mark has acquired distinctive character is whether 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 undertaking (Société des Produits Nestlé SA v Cadbury UK Limited, www.practicallaw.com/2-619-7155).
N applied to register in the UK a three-dimensional trade mark in relation to chocolate and other goods in class 30. The mark applied for corresponded to the shape of the well-known four-finger product sold by N under the name KitKat in the UK, except that it lacked the KitKat logo, which was embossed on the actual product.
C argued that the mark lacked distinctive character so that registration was precluded by section 3(1).
The High Court refused to register the shape (www.practicallaw.com/0-623-5021). N appealed, arguing that the mark had acquired distinctive character through use prior to the application date.
The court dismissed the appeal. The test to be applied in assessing acquired distinctiveness, showing that consumers had come to perceive or rely on the mark as an indication of origin would be sufficient to show acquired distinctiveness, but reliance was not a precondition.
The court considered the concept of the acquisition of distinctive character through use with another registered mark. A perception that the goods designated by the mark originated from a particular undertaking was required to establish acquired distinctiveness. This must be distinguished from recognition or association, where the public did not regard the shape alone as a badge of origin for the products, but simply regarded the shape as a characteristic of products of that kind or as reminiscent of a familiar product and brand name.
The distinction was significant due to the considerable value of a registration of a three-dimensional shape as a trade mark. It gave the owner an exclusive right to use that shape in relation to the product concerned, without needing to show a likelihood of confusion about the origin of the product to prevent third parties from using an identical shape. But if consumers did not perceive the shape as denoting the origin of the product, no one would actually be confused and the protection afforded by the registration would not be justified.
When assessing whether N had proved that a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question, it was legitimate to consider whether that person would rely on the sign as denoting the origin of the goods or services if it were used on its own. If in any case it was shown that consumers have come to rely on the mark as an indication of origin then this would establish that the mark has acquired distinctiveness.
However, where a mark had been used in conjunction with a registered trade mark, so that it was difficult to establish reliance, it did not need to be shown that the public had actually come to rely on the mark in the course of their transactional behaviour. It was sufficient to establish that consumers had come to perceive the product designated by the mark as originating from a particular undertaking.
The overall assessment of the evidence including the results of the survey did not establish distinctiveness of the three-dimensional mark. There was no evidence that the shape of the product had featured in N's promotional and advertising material and the product had only ever been sold in an opaque wrapper. Although at least half the people surveyed thought that the picture shown to them was a KitKat, they might have had in mind a product coming from the same source as KitKat, or a product of the KitKat type, or a product which looked like a KitKat. N had shown recognition and association of the shape with KitKat but had failed to prove that the shape had acquired a distinctive character.
The court used the analogy of a supermarket basket of unwrapped and unmarked chocolate bars in the shape of the mark applied for. The key question was whether the consumer would perceive the bars in the basket as originating from N and not from others. The evidence was that consumers would associate the shape with KitKat, but would not see it as a badge of origin.
This decision illustrates the difficulty of attempting to register a three-dimensional shape mark as a trade mark, in particular proving acquired distinctiveness of a three-dimensional shape mark when it has been used with another registered trade mark. In these cases, survey evidence may not be enough, and evidence that the public have been educated to understand that the shape was a badge of origin may be required. The court suggested examples of other evidence that could be relied on, including that the shape of the product had featured in the applicant's promotions for the goods for many years before the date of the application.
It will generally be an uphill struggle to secure registration of a three-dimensional shape mark through use with another registered trade mark, because, as noted by the court, once granted, such a mark will give the trade mark owner a monopoly on that shape which may not be justified.
Case: Société Des Produits Nestlé SA v Cadbury UK Ltd EWCA Civ 358.
First published in the July 2017 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.