Kit-Kat trade mark bid dismissed once more

Nestlé’s battle for trade mark registration has suffered another blow after the English High Court has dismissed their appeal against a previous decision to refuse the registration of their proposed mark.

The mark in question was a three dimensional shape of their four finger Kit-Kat chocolate bar.

The original application to the UK Intellectual Property Office was rejected for a lack of distinctiveness and the believe that the shape resulted from the goods themselves. This decision was appealed by both nestle and Cadbury on different aspects of the decision.

On appeal, Mr Justice Arnold submitted a preliminary ruling to the Court of Justice for the European Union asking three distinct questions to establish further clarification. These were:

1. When determining distinctive character, is it sufficient for the applicant to prove that a significant proportion of ‘relevant’ people associate the mark with the applicant?
2. If a shape has three essential features, two of which are necessary to obtain a technical result, should trademark registration be denied?
3. Whether Directive 2008/95/EC (trademark directive) should be interpreted as preventing registration of shapes that are necessary to obtain a technical result.

The CJEU gave their ruling in response to these question stating in order to be granted a trademark that has allegedly acquired distinctive character, an applicant must prove that the “relevant class of persons” perceives the goods or services as being designated exclusively by the applied-for mark, as opposed to any other mark which might also be present. In response to question two, they stated that the Trade Mark Directive precludes the registration of the shape containing three essential function including those resulting from the nature of the goods themselves. Lastly, the court said that legislation barring 3D trademark registration refers only to “the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured”.

Following this, Justice Arnold considered these answers. He stated that he felt the CJEU had not answered question one effectively as they had with the other two. With this the focus was on acquired distinctiveness. Arnold explains that ‘in order to demonstrate that a sign has acquired distinctive character, the applicant must prove that, at the relevant date, a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question’.

With this in mind, he concludes that the proposed trademark had not acquired distinctive character and the registration was refused.

Nestle have commented on this ruling expressing that they will be appealing once more as they feel the kit Kat is a distinctive shape worth registration.

It seems to be that this case is still not over!

By Ellis Sweetenham