Advocate General Delivers Verdict On High Profile Case

The Advocate General of the Court of Justice of the European Union (CJEU) has advised the CJEU that Nestle’s application to register the shape of its four-fingered bar as a trade mark should fail as it has not obtained the requisite “acquired distinctiveness” to qualify for trade mark protection.

Since a factory employee’s request for a snack that “a man could take to work in his pack” led to the creation of the first “Kit Kat” in 1935, the chocolate-covered biscuit snack has grown into one of the world’s most popular chocolate bars, selling more than 1 billion packs per year.  In 2010 Nestle applied to register the three-dimensional sign represented below as a UK trade mark to cover products such as chocolate confectionary, biscuits, cakes and wafers.  Nestle successfully managed to persuade the Trade Marks Registry that, due to the history and widespread use of the shape since the creation of the Kit Kat, the shape had acquired a distinctive character such that it qualified for protection as a trade mark. 
 
When the trade mark application was advertised, Cadbury opposed the application on various grounds, the principal being that under the EU Trade Mark Directive a sign cannot be registered if it consists of a shape which is necessary to obtain a technical result; essentially, that the four fingers separated by breaking grooves were there to make it easy for the product to be manufactured and for customers to break the fingers apart rather than, as is required for trade mark protection, to enable consumers to distinguish the Kit Kat from other products.  The hearing officer at the Trade Marks Registry agreed with this view and accepted Cadbury’s opposition.

Nestle appealed to the High Court, where the judge referred this issue of ‘acquired distinctiveness’ to the Court of Justice of the European Union.  The Advocate General has now published his verdict, which is non-binding on the CJEU but is usually a clear indication of how the court will act.

Advocate General Wathelet ruled that “acquired distinctiveness” in this scenario meant that without any packaging or reference to the name ‘Kit Kat’, the shape of the four-finger bar alone would have to enable consumers to identify the product as a Kit Kat.  In his opinion this could not reasonably be expected.  He also ruled that the shape ought to be precluded from registration on the grounds that it was necessary to achieve a technical result (in essence agreeing with Cadbury’s earlier arguments on this point).

Expert Opinion

“For companies trying to protect three-dimensional products as trade mark, this decision is nothing new; as long ago as 1994 Unilever attempted to protect its ‘Viennetta’ shape through a trade mark registration, which Nestle opposed and which later settled out of court. The case highlights the real difficulties of protecting trade mark protection for shapes, even where the shape in question has exceptional recognition amongst consumers – in this case 90% of survey respondents mentioned the Kit Kat brand when shown a picture of a four-fingered chocolate bar, but this was not enough to grant Nestle a monopoly over the four-finger shape.

Even though it is now unlikely that the CJEU will decide in favour of Nestle and allow the registration, the story may not be over. Nestle still has its registration for a Community Trade Mark for the four-finger shape pending, and the European Trade Mark Registry, in contrast to the UK Registry, has already dismissed Cadbury’s objections. If ultimately Nestle is granted a Community Trade Mark then this will allow the shape to have trade mark protection within the UK. We wait to see whether the two cases will be joined together so as to ensure a harmonised decision.”
Georgie Collins - Partner