On July 8 2010, Nestlé sought to register KitKat's 3D shape as a trademark at the UK Intellectual Property Office (IPO).
The UK IPO trade mark registry accepted the application for registration and it was published for opposition. January 28 2011, Cadbury opposed the application and by decision on June 20 2013, the examiner of the UKIPO found the trade mark at issue to be devoid of distinctive character due to the following:
The shape had three features overall:
1. Kit Kat’s rectangular shape;
2. The presence, position and depth of grooves along the bar;
3. The number of the grooves, which determine how many ‘fingers’ of chocolate there are)
The first feature “resulted from the nature of the goods” was only eligible for protection in relation to cakes and pastries, and the other two features are necessary to obtain a technical result. Since the last two features were necessary to obtain a technical result, the examiner rejected the application for registration.
On July 18 2013, Nestlé appealed against the decision to the High Court of Justice of England & Wales, to which the court stayed the case and asked the CJEU to review three questions.
1. When determining distinctive character, is it sufficient for the applicant to prove that a significant proportion of the 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. Should the EU’s Trade Marks Directive be interpreted as preventing registration of shapes that are necessary to obtain a technical result?
On June 11 2015, CJEU Advocate General (AG) Melchior Wathelet pronounced the following:
Under EU law a shape cannot be registered as a trademark if it has features that are “necessary to obtain a technical effect”.
It is not sufficient for the applicant for registration to prove that the relevant class of persons recognises the trade mark in respect of which registration is sought and associates it with the applicant’s goods or services.
He must prove that only the trade mark in respect of which registration is sought indicates the exclusive origin of the goods or services at issue.
Wathelet said that the Directive 2008/95/EC:
“must be interpreted as precluding registration of a shape which is necessary to obtain a technical result” …
And adds… “not only with regard to the manner in which the goods function, but also with regard to the manner in which they are manufactured”.
Although Wathelet’s opinion is not binding, the CJEU is thought to follow the AG’s opinion in 80% of cases. After the CJEU has ruled on the case it will return to the English High Court.
The Court answered first the second and third question, followed by the first question:
The second question
The Court made reference to the grounds of refusal of registration and how the operate independently of one another, meaning that each of them must be applied independently of the others. It added that if any of the listed criteria is satisfied, a sign which is composed of exclusively the shape of goods cannot be registered as a trade mark.
The Court finished the response to the second question stating that "the answer to the second question referred is that Article 3(1)(e) of Directive 2008/95 must be interpreted as precluding registration as a trade mark of asign consisting of the shape of goods where that shape contains three essential features, one of whichresults from the nature of the goods themselves and two of which are necessary to obtain a technicalresult, provided, however, that at least one of the grounds for refusal of registration set out in thatprovision is fully applicable to the shape at issue."
The third question
After making some preliminary observations on the wording of Article 3(1)(e)(ii), the third question was answered in the following manner:
"Article 3(1)(e)(ii) of Directive 2008/95, under which registration may be refused of signs consisting exclusively of theshape of goods which is necessary to obtain a technical result, must be interpreted as referring only tothe manner in which the goods at issue function and it does not apply to the manner in which thegoods are manufactured."
The first question
Making regard by agreeing to the Advocate General's Opinion, the Court answered the first question stating that "in order to obtainregistration of a trade mark which has acquired a distinctive character following the use which hasbeen made of it within the meaning of Article 3(3) of Directive 2008/95, regardless of whether thatuse is as part of another registered trade mark or in conjunction with such a mark, the trade markapplicant must prove that the relevant class of persons perceive the goods or services designatedexclusively by the mark applied for, as opposed to any other mark which might also be present, asoriginating from a particular company."
Both the giants Nestlé and Cadbury as well as us await anxiously the UK Court's reaction.
See full text of the decision here: http://curia.europa.eu/juris/document/document.jsf?text=&docid=167821&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=758125
Written by Athena Poysky Gracia
Source: www.ipkat.com
The image was extracted from the Court Decision.
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