The latest blow in the trade mark war between chocolate giants Nestlé and Cadbury has been struck by the team in the purple corner, after the highest European court denied Nestlé a trade mark registration for the shape of the Kit Kat.
The decision last month by the Court of Justice of the European Union (CJEU) in case (C-215/14) established that for the three dimensional shape of the goods themselves to function as a trade mark, the public has to recognise that shape as a trade mark in its own right. As the three dimensional shape of the Kit Kat is covered at the point of sale, and by packaging bearing other famous trade marks, the court decided it never functioned as a badge of origin.
The key lesson for any businesses with aspirations for protecting a three dimensional shape as a trade mark, and in particular the three dimensional shape of the product itself, is that they would have to educate the public that the three dimensional shape was a trade mark, by perhaps using it as such in advertising and promotion, and by making it clearly visible at the point of sale. An example of activity which might achieve this is Coca-Cola’s use of its bottle shape in graphical advertising, and in the form of three dimensional models at the point of sale.
The decision of the CJEU in the Kit Kat case follows on the heels of an earlier decision by the UK Court of Appeal which denied Cadbury the chance to register the colour purple per se for selling chocolate.
Cadbury had attempted to register in the UK the Pantone colour (2685C), stating that it would be the predominant packaging colour for the goods. Nestlé opposed Cadbury’s trade mark application, but was initially unsuccessful. However the Court of Appeal found in Nestlé’s favour, on the basis that the word “predominant” used in the explanation of the mark was not clear, because it implied that other unspecified colours would also be present.
The lesson in this case for any business with aspirations for protecting a colour per se as a trade mark is that once again clarity is required, and in particular in expressing exactly how the colour mark is used.
Jointly these two decisions illustrate just how problematic non-traditional trade marks types can be. The central issue seemingly one of being clear, and in using the trade mark in such a way that it is recognisable as a standalone brand which actually functions as a badge of origin in its own right.
Max Stacey, head of trade marks at Baron Warren Redfern, explained that the mere recognition by the public of a shape or colour being associated with a particular company is not enough in itself to establish the presence of a trade mark.
He said: “The survey evidence provided by Nestlé before the UK-IPO showed a very substantial number of responses linked the shape of four fingered bar with the Kit Kat product and with Nestlé. However, the CJEU held that this was not enough, and that it would have had to be shown that the shape mark had been used in its own right to promote the product, without reference to say the Kit Kat word mark.
“Given that chocolate confectionery is generally under a wrapper, this is a major stumbling block, as the consumer only sees the bar after unwrapping it. Therefore, how can the consumer use the shape alone to distinguish the chocolate bar from all others? This is essentially the position taken by the original UK Hearing Officer, and an approach that we agree with.
“The lesson for the brand owner is to make trade mark use of these unusual alternative marks by educating the public that they function as a trade mark and are not merely aesthetic or functional. The parties in these cases should have regularly marketed the products under sole reference to the colour and shape respectively, to have had any chance to secure registered rights and, therefore, a monopoly in the marks.”
BWR Trademark Attorneys can help you register a trademark and file a trademark application in the early stages of design and provide advice and information on trademark infringement should you require any help.