Kit Kat—CJEU gives thumbs down to registration of 3D shape mark

Kit Kat—CJEU gives thumbs down to registration of 3D shape mark

What does the latest guidance from the Court of Justice of the European Union (CJEU) in Societe des Produits Nestle SA v Cadbury UK tell us about the pitfalls of registering product shapes as trade marks?

What is the background to this case?

This ruling from the CJEU is the latest instalment in a four year spat between Cadbury and Nestle concerning Nestle’s application to register the shape of its famous four-fingered Kit Kat as a UK trade mark (the mark).

For a comprehensive background, see coverage of the High Court’s ruling: Kit case – Have a break and wait for CJEU to clarify law on shape trade marks.

After the UK Intellectual Property Office refused registration of the mark in 2013, Nestle appealed to the High Court. Arnold J referred questions to the CJEU in order to clarify certain areas of trade mark law. The Attorney General’s Opinion suggested that EU trade mark law precluded registration of the mark. The CJEU has followed with a slightly more mixed ruling but the overall indication is that Nestle’s mark will not achieve registration in the UK.

What are the key legal issues?

As demonstrated in this case, three dimensional shape trade marks depicting a product are notoriously difficult to register because often they will be caught by the Trade Marks Directive 2008/95/EC, art 3(1)(e) (TMD) which prevents registration of marks which consist exclusively of:

  • the shape which results from the nature of the goods themselves (art 3(1)(e)(i))
  • the shape of goods which is necessary to obtain a technical result (art 3(1)(e)(ii))
  • the shape which gives substantial value to the goods (art 3(1)(e)(iii))

Also key to this case is the application of TMD, art 3(3):

‘A trade mark shall not be refused registration or be declared invalid…before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character.’

What questions were referred to the CJEU by the High Court?

Question 1

In order to establish that a trade mark has acquired a distinctive character following the use that had been made of it within the meaning of TMD, art 3(3), is it sufficient for the applicant to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods in the sense that, if they were to be asked who marketed the goods in question, they would identify the applicant. Alte

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