Following the latest development in the long-running battle between Nestlé and Cadbury, it seems probable that registration of the four-finger shape of Nestlé’s Kit Kat bar as a trade mark will be refused in the United Kingdom at least and very likely in the European Community as well.
Cadbury had attacked Nestlé’s attempt to register the shape of the ‘standard’ four-finger Kit Kat bar as a trade mark through proceedings which had reached the English High Court. The court referred a number of questions to the European Court (CJEU) for guidance. In particular, it asked for guidance on the question: Is it sufficient that a significant proportion of the relevant class of persons recognise the Kit Kat shape and associate it with the applicant’s goods, or must they rely on it as indicating the origin of the goods?
The Advocate General’s Opinion (preliminary guidance written by the Advocate General for the court) on the issues was published earlier this week. The Opinion is not binding on the CJEU but it would be unusual for the court not to follow the guidance given. Nestlé had shown that more than 90% of those questioned recognised a four-finger Kit Kat when they saw one, but the Advocate General held that ‘mere recognition’ was not sufficient to justify registration of the shape as a trade mark. If followed by the CJEU and the English High Court, as is probable, this means that Nestlé will lose any rights it might have to prevent others selling similarly shaped-bars through its trade mark registrations.
In the United Kingdom, there is a ray of hope for Nestlé; whatever the situation on the Register of Trade Marks, it can still sue imitators of the Kit Kat shape for passing-off, an action based on common law rights arising from reputation / recognition and damage to goodwill, rather than from registration.
More fundamentally though, the question remains – when did you last manhandle a chocolate bar in a sweet shop with a view to discovering the hidden shape of the wrapped bar before making your purchase? No, me neither! Trade marks, by their definition, are intended to signal the trade origin of the goods to a (potential) purchaser. So, should shapes which cannot be seen when the goods are in commerce be registered as trade marks?
The four-finger shape might have a very high level of recognition, but it seems to me that if it cannot / does not function as a trade mark, even that level of recognition does not turn it into one!
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.