Still no 3D trade mark for Kit Kat

January 2016

Nestlé have had their appeal to register the three-dimensional kit kat bar shape in the UK dismissed.

The long running saga began with Nestle’s 2010 application to register the three-dimensional sign (the Trade Mark) graphically represented below as a United Kingdom trade mark in respect of various goods in Class 30.  This was opposed by Cadbury and then refused in 2013 by the UKIPO.   Nestlé appealed against the UKIPO hearing officer's decision to refuse registration of the Trade Mark (except in relation to "cakes" and "pastries") and Cadbury cross-appealed against his decision.

The first UK judgment dated 17 January 2014 concluded that the hearing officer was incorrect to find that the Trade Mark was inherently distinctive in relation to "cakes" and "pastries".  But in relation to the issues of acquired distinctiveness and necessity to obtain a technical result it was necessary to seek clarification of the law from the Court of Justice of the European Union (CJEU) in order to determine the appeals.  The CJEU delivered its judgment on 16 September 2015 (Background here).  The parties have continued to disagree on the effect of the CJEU’s response, which has been looked at in today’s decision, [2016] EWHC 50 (Ch).

 Kit Kat

 In applying the CJEU’s judgement, Justice Arnold analysed the response to “Question 1” which stated that the applicant “…must prove that only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services at issue.”  Justice Arnold concluded that in order to demonstrate that a sign has acquired distinctive character, the applicant or trade mark proprietor must prove that, at the relevant date, a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question (as opposed to any other trade mark which may also be present).  This emphasised there is a difference between mere recognition and the public differentiating the origin of the goods of one undertaking from the other.  That a majority were able to name KIT KAT did not prove they perceived the Trade Mark as exclusively designating the trade origin of such products, any more than the fact that a majority of consumers of cars may be able to name a car manufacturer as a source of cars of a particular shape shows that they perceive that shape as identifying the origin of such cars.

Ultimately Justice Arnold held the original UKIPO hearing officer applied the law correctly that mere recognition was not enough to show the shape acting as a trade mark and thus Nestlé’s appeal failed.  This decision can be appealed to the Court of Appeal, but Nestle will have to get leave to appeal.

In the words of Lee Curtis, HGF Partner and Trade Mark Attorney: “Despite survey evidence clearly showing that a very large proportion of the British chocolate buying public recognised the shape of KitKat bar, the judge rejected that this was sufficient to enable Nestle to register the shape of the bar as a trade mark.  Nestle had to show that a significant proportion of public perceived the relevant goods as originating from a particular undertaking (here Nestle) than any other because of the sign (here the shape)  in question (as opposed to any other trade mark). In this case, the word mark KitKat, the colouration of the packaging etc. were used in combination with the shape.

The judge himself admitted that the difference between mere ‘recognition’ and a shape acting as a trade mark would appear ‘rather elusive’ to those not experienced in trade mark law. However, it was a very important distinction, which for Nestle proved fatal for their trade mark registration attempts.”

This update was prepared by Lee Curtis, Partner in our Manchester office.

If you would like further advice on this or any other matter please contact Lee or your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.