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Trade marking the shape of goods

Nestlé’s 10-year efforts to achieve EU trade mark registration for the three-dimensional shape of its famous four-finger KitKat chocolate bar had a further setback in December last year with an adverse ruling from the EU General Court. In the UK, the current state of play is no better, with the High Court having ruled in January last year against UK trade mark protection for the shape. Nestlé’s nemesis through most of this has been Mondelez UK Holdings & Services Ltd., a company the name of which will mean nothing to many but whose former name was “Cadbury Holdings Limited”. Cadbury’s interest in the proceedings is not only that of a rival manufacturer which presumably does not want to be “shape-constrained” in its products, but was undoubtedly spurred by Nestlé’s ultimately successful opposition to Cadbury’s own attempts to trade mark the particular shade of purple used in its branding and packaging (another story!).

Both UK and EU trade mark law prohibit registration of a mark “devoid of any distinctive character”. One of the main problems for Nestlé in both tribunals was, essentially, its failure to demonstrate that the product shape for which trade mark protection was sought had a distinctive enough character.

The EU General Court accepted that Nestlé had shown, through its survey evidence, that the product shape was recognised in 10 EU countries, and so had acquired a “distinctive character” in a substantial part of the EU. This was not enough, however, as there was no such evidence for other parts of the EU, and it was not possible simply to ignore that, as “distinctive character” had to be shown throughout the territory of the EU.

In the High Court, Arnold J. ruled (after a preliminary ruling had been sought from the Court of Justice of the EU) that, for Nestlé to demonstrate “distinctive character”, it was not enough for it to prove that a significant number of people recognised the product shape and associated it with Nestlé’s goods. Nestlé had to prove that, at the relevant date, a significant number of people perceived the product as originating from Nestlé because of the product shape. The fact that a majority of consumers shown the product shape were able to name KitKat did not prove that they perceived the mark represented by the shape as exclusively designating the origin (ie Nestlé) of the product. Nestlé failed in this requirement.

Even if the company applying for trade mark protection for the shape of its goods could succeed on distinctiveness, there remain major hurdles in the form of three absolute grounds for refusal of trade mark protection for the shape of goods.

First, if the proposed trade mark consists exclusively of a shape which results from the nature of the goods, it is unlikely to be capable of registration. This makes obtaining trade mark protection very difficult for many everyday objects, ranging from bars of soap and torches to footballs and furniture. The more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character. Recent attempts to obtain trade mark protection by the manufacturer of the Tripp Trapp baby chair have demonstrated how hard it is to overcome this hurdle.

The second potential hurdle is where the proposed trade mark is a shape necessary to obtain a technical result. Lego’s very long-running attempts to obtain EU trade mark protection for their famous bricks has fallen foul of this, though Lego has been much more successful in obtaining and defending trade mark protection for its mini-figures (the “technical result” issue was avoided because of features such as the protruding heads which have no obvious technical function, and Lego was able to establish sufficient “distinctive character”).

Both UK and EU trade mark law prohibit registration of a mark “devoid of any distinctive character”.

The final potential absolute hurdle is where the shape (for example, a shape which is aesthetically pleasing) gives “substantial value” to the goods in question. In such circumstances, there is clearly a significant design element and, if appropriate, protection should be sought by way of a registered design, rather than through a trade mark. In a 2016 case brought by one London black cab maker, the London Taxi Company, against another, Frazer-Nash, for trade mark infringement and passing off, this was one of the grounds by virtue of which the High Court ruled that certain London Taxi Company trade marks were invalid.

To conclude, obtaining trade mark protection for the shape of goods continues to be very difficult. Ending on a sweet note, however, it can be done, even for chocolate – the shape of the Ferrero Rocher chocolate praline, much sought after at ambassadors’ receptions, is protected.  And Nestlé fight on, with an appeal against the High Court decision under way.

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