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KitKat shape not registrable as a trade mark
09 March 2016

The High Court has refused Nestle’s appeal to allow an application to register the KitKat shape as a UK trade mark on the basis that consumers do not rely on the shape of the KitKat to denote trade origin. After referring questions to the CJEU, Arnold J upheld the UK Intellectual Property Office’s decision that Nestle had not established that consumers rely on the KitKat shape. He stated that the evidence showed that consumers rely on the KitKat word mark to denote trade origin.

Nestle is currently seeking to register the four fingered version of its KitKat arguing that this shape has over time acquired distinctive character. The application was successfully opposed by Cadbury on the grounds that the shape lacks inherent distinctive character and has not acquired distinctive character. Nestle appealed the UK Intellectual Property Office’s decision to the High Court. Before reaching a decision, Arnold J referred the following question to the CJEU:

“In order to establish that a trade mark has acquired distinctive character, is it sufficient for the applicant to prove that at the relevant date a significant proportion of the relevant public recognise the mark and associate it with the applicant’s goods in the sense that, if they were to consider who marketed the goods bearing that mark, they would identify the applicant or must the applicant prove that a significant proportion of the relevant public rely on the mark (as opposed to any other trade marks which are present) as indicating the origin of the goods?”

The CJEU’s response to this question was as follows:

“In order to obtain registration of a trade mark which has acquired a distinctive character, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant public perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company”.

After criticising the CJEU for not directly answering his question, Arnold J held that when assessing whether the relevant public perceive goods as coming from one undertaking because of the sign, the Court should consider whether persons rely on the sign as denoting origin if used on its own. He referred back to the hearing officer’s decision that the evidence provided by Nestle did not show that the relevant public rely on the shape as denoting origin and that consumers rely on the word mark KITKAT to denote origin. Arnold J agreed with these findings and therefore refused Nestle’s appeal.

This may not be the last that we hear on this trade mark application as Nestle has indicated that it intends to appeal the High Court’s decision. However, the decision indicates that where there has been use of a shape in conjunction with a word mark, in order to register the shape as a trade mark, the applicant will need to produce strong survey evidence to show that the shape on its own is relied on to denote trade origin. Examples of chocolate shapes that have been able to establish this and reach registration include the shape of the Toblerone chocolate bar and the shape of a Walnut Whip.

If you wish to discuss registering a shape mark with us or have any other questions regarding your trade mark portfolio, please contact Bill Gornall-King on 0118 952 7144 or email [email protected].

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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