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What do the shape of 3-D shape trademarks and KitKats have in common?

A recent judgement of the European Court of Justice (ECJ) in relation to certain questions put to it by the High Court of Justice of England and Wales has provided further guidance in relation to 3-D shape trademarks.

Kit Kat 3D Trademark Application

Nestlé submitted a trademark application for the shape of its four finger KitKat biscuit. The illustration provided did not show the embossed KitKat logo on each finger. The original application was accepted on the basis that, although the mark was not of itself distinctive, it was said to have acquired a distinctive character (in the mind of the reasonable consumer) by the use which had been made of it. That is to say, consumers associated four finger wafer biscuits of this design with KitKat (Nestlé) because they had been produced for over 70 years.

Cadbury’s Opposition

Cadbury’s submitted an opposition to the Intellectual Property Office. Various appeal stages later and the matter ended up in front of the High Court in England, which referred questions to the ECJ for determination.

The legislation relevant to trademark registration in the UK states that a trademark shall not be registered (or if so registered, shall be invalid) if:

  1. it is devoid of distinctive character;
  2. it is made up of signs which consist exclusively of shapes (i) resulting from the nature of the goods; (ii) necessary to achieve a technical result;
  3. the mark consists exclusively of shape which gives substantial value to the goods (we can ignore this one for the purposes of this case).

The JudgementKit kat take a break

The ECJ decided that the four fingered wafer design was devoid of distinctive character and, as the trademark was made of shapes which went to the nature of the goods (i.e. their function, rather than the method of manufacture) that this precluded the trademark from registration and prevented the application of acquired distinctiveness.

The court noted that if any one of the issues regarding shape was fully applicable to the application (as opposed to a cumulative effect) then it could not be validly registered.

It was also concluded in the ECJ’s answers that to benefit from acquired distinctiveness the mark applied for had to be recognisable in its own right, and not by association with other marks around it. A chocolate wafer biscuit would have to recognised as a Kit Kat, without the embossed logo, wrappings and other KitKat designs.

The lessons learned

Despite the difficulties demonstrated by this case for shape trademarks, owners of intellectual property rights should ensure adequate alternative protections are in place for their IP rights. Now reader, you may take a break…

If you are contemplating a trademark application or want to consider other options please feel free to contact me, Kelly Craig, on 01383 721621 or by e-mail.


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