The KitKat case: To protect or not to protect: The fine lines

In the recent judgement in the case of Societe Des Produits Nestlé SA vs Cadbury UK Ltd [2017] EWCA Civ 358, handed down a few weeks ago by the England and Wales Court of Appeal in the ongoing KIT KAT shape mark case, the Court has upheld the decision of the High Court that said that the four finger shape mark is not registrable as a trade mark.

This is the second appeal, in proceedings that started at the UK IPO in the opposition by Cadbury to Nestle’s application to register the four fingered chocolate bar.  The mark, the shape of the four-fingered chocolate bar, was lacking in the inherent distinctiveness required for the registration of a trade mark and the evidence of use submitted by Nestle did not show that the shape had acquired the required level of distinctiveness to be suitable for registration. Nestle appealed to the High Court which referred certain questions to the CJEU. After considering the response of the CJEU, reported in our earlier article here, the High Court ruled against Nestle. This High Court decision was reported in our earlier article here.  Nestle then appealed to the Court of Appeal which has found against Nestle and maintained that the shape mark did not meet the threshold of distinctiveness acquired as a result of the use that had been made of the shape.

The Court of Appeal has reiterated that in order for the shape mark to be registrable as a trade mark it must not only serve to allow the consumer to recognise and associate the mark with the KIT KAT logo but it must be proved that the consumers regard the shape itself as a badge of trade origin, which means that the consumers would rely on the shape alone to buy the goods, if the shape was used on its own without any of the KIT KAT trade marks. The Court has also explained that the distinction is not an easy one but it is essential, and that the shape mark should be able to identify and distinguish the goods of Nestle from other traders rather than the shape being merely recognised and associated with characteristics of the product and the brand name KIT KAT with which the consumers may have become familiar.

The Court of Appeal has gone to great lengths to explain the emphasis for qualification for registration of the shape resting on the shape denoting specifically the origin of a product because of the considerable value and monopoly the shape would have if it were to be registered as a trade mark. Registration of the shape mark would in certain situations allow the proprietor to prevent the shape from being used by other producers because a likelihood of confusion as to the origin of the goods would be presumed, and it would be unjustified to allow such protection if the shape was not perceived by consumers to be an indicator of origin.

The difficulties in registering inherently non-distinctive shape marks and in the kind of evidence needed to successfully establish a claim of acquired distinctiveness has again been clearly demonstrated in this decision of the Court of Appeal.   In the present case the evidence Nestle produced did not support a conclusion that the shape mark had been used by Nestle as an indicator of origin, or that Nestle had educated the public that goods under the shape mark originated from Nestle and no other producer of similar shaped products that were on the market during the years from which Nestle provided evidence. In the evidence provided by Nestle, its shape mark has been sold in an opaque wrapper with its KIT KAT logo on the wrapper and embossed on the actual chocolate product inside the wrapper, and there was no significant evidence that the shape mark had been shown on the packaging. Nestle also could not show that it had advertised the goods under the shape mark alone. Hence, Nestle’s evidence could not show that it had used the shape mark as a trade mark. The Court also remarked that there were other four-fingered chocolate products on the market before the application date, none of which was thought to be a KIT KAT.

Manufacturers that have a long term aim to seek registration of secondary and possibly non-distinctive marks due to their long use, particularly where such use has been in association with or as parts of other registered marks, will have to be careful to use the secondary marks, especially in packaging and promotional and advertising material in a manner that clearly shows that the owner is making efforts to educate its customers to view the secondary marks as indicating origin of the products, not merely as being associated with or calling to mind the primary marks or the products under the primary marks.

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