IP, Technology & Data

The Court of Justice of the European Union (CJEU) has today delivered its judgement in the latest instalment of what has become known as the “chocolate wars” between Nestle and Cadbury over their brands and intellectual property rights.

You might recall Cadbury’s failed attempts to register the purple colour it uses on its wrappers (Pantone 2685C, to be specific). This time the dispute concerns Nestlé’s attempts to register a UK trade mark for a shape mark in respect its four-finger Kit Kat chocolate bar – you can get the background and a report of the Advocate General’s opinion here. Cadbury opposed the registration on the basis that, amongst other things, the four-finger shape was not in itself sufficiently distinctive to allow consumers to identify the origin of the goods.

The CJEU, on a referral from the High Court in England, has ruled that “the trademark applicant [Nestlé] must prove that that mark alone [in this case the four fingered shape mark], as opposed to any other trade mark which may also be present [for example Nestle and Kit Kat branding on the packaging], identifies the particular undertaking from which the goods originate”. In other words, the shape of the chocolate bar must of itself be sufficient to allow consumers to identify it as being an original Nestlé Kit Kat, without any regard to the packaging or other branding. The High Court will now make the ultimate decision about whether the four-fingered shape can be registered by Nestlé as a UK trade mark, but that seems unlikely in light of the CJEU’s decision.

This case has attracted significant publicity – my colleague Robert Buchan even talked about it on BBC Scotland breakfast radio this morning! However the CJEU’s judgement does seem to be consistent with existing case law which has seen failed attempts to register the shapes of various dishwasher tablets, soaps and even a torch. How such case law is or should be interpreted in each particular case is open to debate but it is clear that, when an application for registration is opposed, brand owners will continue to face a high bar in trying to establish that their shape mark has sufficient distinctiveness to merit protection.

It is much more challenging to prove that shapes are perceived by consumers as a guarantee of origin of the products, as generally consumers won’t rely on shapes alone to identify who is selling the goods. If the four-finger Kit Kat shape cannot be registered after 75 years of use as a UK trade mark it is likely that registration of shape marks will be even more challenging, and practically impossible, in the UK. Brand owners will have to continue to rely on brand names, logos or packaging to register trademarks, or rely on the common law of passing off which can look at the overall get up of the product. It will be much harder for all but the most fanciful or unique shapes to be registered as the reality is that most products are typically combined with one or more word marks or logos.


IP and Technology