INTA Bulletin

October 15, 2015 Vol. 70 No. 18 Back to Bulletin Main Page

EUROPEAN UNION: CJEU Gives Nestlé a Break in Kit Kat Shape Ruling

A recent ruling of the Court of Justice of the European Union (CJEU) gives some guidance on the way that 3D shapes will be assessed when considering whether they are capable of registration in the EU. Société des Produits Nestlé SA v Cadbury UK Ltd, Case C-215/14, judgment of the CJEU, Sept. 16, 2015.

Nestlé applied to register the 3D shape shown below (the Mark) as a trademark in the UK on July 8, 2010.

Nestlé’s application was accepted by the UK Intellectual Property Office (UKIPO) but was successfully opposed by Cadbury, which persuaded the UKIPO that the Mark had not acquired the necessary level of distinctiveness to be accepted for registration.

In addition, the UKIPO identified three features of the Mark, one of which results from the nature of the goods and two that are necessary to obtain a technical result, which in combination were enough to prevent registration.

Nestlé appealed against the UKIPO decision to the High Court, which referred three questions to the CJEU for a preliminary ruling.

The CJEU held that:
  1. It is not enough to show acquired distinctiveness that relevant consumers “recognise the mark and associate it with the applicant’s goods.” Instead, it must be shown that consumers perceive the mark (as opposed to any other trademarks which may also be present) as indicating the origin of the goods;

  2. Where “a shape consists of three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result,” that is only enough to preclude registration of that shape as a trademark if “at least one of those grounds is fully applicable to the [shape]”; and

  3. When assessing whether shapes are necessary to obtain a technical result, it is only necessary to consider “the manner in which the goods function,” and “the manner in which the goods are manufactured” is not relevant.
The case will now go back to the High Court, which will come to a decision based on the CJEU’s guidance.

In some ways this ruling is good news for trademark owners trying to register complex shapes as trademarks, as these should not be refused registration unless there is a ground of refusal that is relevant to the entire shape. However, the ruling is potentially bad news in other ways, as when trying to show acquired distinctiveness it may be difficult to prove that consumers perceive a shape alone (and not other trademarks used on the relevant products) as indicating the origin of the relevant products.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association