In Société des Produits Nestlé SA v Cadbury UK Ltd  EWHC 16 (Ch), the High Court held that it was necessary to seek clarification from the CJEU in relation to the legal principles surrounding the registrability of Nestle’s four finger shaped trade mark.
Nestlé applied to register the three-dimensional shape of its four fingered chocolate bar (KitKat) as a UK Trade Mark for goods in class 30. This was accepted by the Trade Mark Registry on the basis that it had acquired distinctive character through use and was published for opposition. Cadbury opposed the application on the grounds that (1) the mark was devoid of distinctive character, (2) it consisted exclusively of the shape which results from the nature of the goods and (3) it consisted exclusively of the shape of goods which is necessary to obtain a technical result.
The hearing officer confirmed that it was possible that a sign can be relied upon as indicating the origin of the goods and thus acquire distinctive character, even if the sign is not visible to the consumer at the time of purchase. However, it was held that there was no evidence that consumers of four finger KitKats rely on the shape to confirm the authenticity of the goods. Nestlé appealed but Mr Justice Arnold held that the hearing officer was correct. He stated that embossing each finger with the words ‘KitKat’ amounted to recognition that consumers do not rely on the shape of the mark, but rather that they rely on the trade mark ‘KitKat’.
Mr Justice Arnold disagreed that the shape was necessary to obtain a technical result.
Mr Justice Arnold felt that it was necessary for the law to be clarified in order to determine whether the Trade Mark was precluded from registration by Article 3(1)(e)(i) and/or (ii) and so he referred the following questions to the CJEU for a preliminary ruling:
- In order to establish that a trade mark has acquired distinctive character following the use that has been made of it within the meaning of Article 3(3) ofDirective 2008/95/EC, is it sufficient for the applicant to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods in the sense that, if they were to be asked who marketed goods bearing that mark, they would identify the applicant or must the applicant prove that a significant proportion of the relevant class of persons rely upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?
- Where a shape consists of three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, is registration of that shape as a trade mark precluded by Article 3(1)(e)(i)?
- Should Article 3(1)(e)(ii) be interpreted as precluding registration of shapes which are necessary to obtain a technical result with regard to the manner inwhich the goods are manufactured as opposed to the manner in which the goods function?
In relation to the first question, Mr Justice Arnold felt that the correct answer to the question is that the applicant must prove that a significant proportion of the relevant class of persons rely upon the trade mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods.
In relation to the second and third questions, Mr Justice Arnold felt that both of these questions should be answered in the affirmative.
It will be interesting to see if the CJEU agrees with Mr Justice Arnold.
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