Kit case - Have a break and wait for CJEU to clarify law on shape trade marks

What should brand owners consider before attempting to register three-dimensional shape marks?

Societe Des Produits Nestle SA v Cadbury UK Ltd [2014] EWCH 16 (Ch)

In the course of a dispute concerning the claimant company's attempt to register a trade mark of similar shape to the Kit Kat bars sold by the claimant, the Chancery Division decided that three questions would be referred to the Court of Justice of the European Union (CJEU).

What is the background to this dispute?
This case is the latest development in an ongoing dispute between Nestlé and Cadbury concerning Nestlé's attempts to register a three-dimensional mark (representing a four fingered Kit Kat). The full judgment is available to Lexis Nexis subcribers here.

On 20 June 2013, the UK Intellectual Property Office (IPO) refused Nestlé's trade mark application in class 30 for various chocolate and chocolate confectionary products, including biscuits but allowed the application in relation to cakes and pastries.  

The IPO decided:

1. The mark consisted exclusively of the shape of the goods which was necessary to obtain a technical result and therefore not allowable under trade mark law. Specifically, the basic rectangular 'slab' shape results from the nature of moulded chocolate bars or biscuits bars—the breaking grooves are necessary to receive a technical result (the ability to break up the bar for easy consumption). None of the features of the Kit Kat shape were deemed decorative or arbitrary.

2. The basic grooved rectangle shape of the mark lacked inherent distinctiveness because it is common in the field of chocolate bars and biscuits (though the shape could be distinctive in respect of cakes and pastries).

3. The mark had not acquired distinctiveness as Nestlé claimed. The IPO found that it was not sufficient that consumers associate the shape mark with Kit Kat (as established by survey evidence in the IPO hearing). Instead Nestlé would