3D shapes as Trade Marks: Nestlé doesn’t get the break it was looking for in protecting the Kit Kat shape

The ability to protect a three-dimensional shape as a trade mark has obvious benefits not least of which is the potential for a perpetual registration in the shape. This is because, for example, it provides a competitive advantage to the proprietor when compared to registered design protection, which can only be renewed up to a maximum of 25 years. There are, however, a number of hurdles to overcome in seeking to achieve protection for a 3D trade mark, as Nestlé is discovering in its quest to protect the shape of the four-fingered Kit Kat chocolate bar.

UK and EU trade mark law prohibits the registration of shapes which, amongst other things, result from the nature of goods themselves, and which are necessary to achieve a technical result. The aim of the “shape” prohibitions is to prevent trade mark protection being used to grant the owner a monopoly on technical solutions or functional characteristics of goods which a consumer is likely to seek in the goods of competitors.

In 2010 Nestlé applied to protect the well-known shape of its Kit Kat product in respect of a range of confectionary goods in Class 30:

The three essential features of the shape are (1) the basic rectangular slab shape; (2) the presence, position and depth of the grooves running along the length of the bar; and (3) the number of grooves which, together with the width of the bar, determine the number of ‘fingers’.

The UK Intellectual Property Office (“UK IPO”) accepted and published the application, which was opposed by Cadbury in 2011.  However, subsequently, the UK IPO agreed with Cadbury and refused Nestlé’s application. The Examiner held that the first feature of the shape resulted from the nature of the goods themselves – a moulded chocolate bar in a basically rectangular shape is a cheap and easy way to produce a chocolate product which presents less difficulty to mould, wrap and stock. The second and third features were necessary to obtain a technical result – essentially the grooves allow the product to be broken easily but to retain strength.

The examiner also held in more general terms the trade mark was devoid of distinctive character and had not acquired a distinctive character through use in relation to chocolate products.

Nestlé appealed to the High Court. Mr Justice Arnold referred three questions to the CJEU (European Court of Justice) for clarification. In essence, these were:

• Where it is necessary to show that a trade mark has acquired distinctive character through its use (rather than being inherently distinctive), is it sufficient to show that consumers recognise the shape coupled with another identifier (here the name KIT KAT) or must consumers be able to identify the applicant (Nestlé) as the source of the product by the shape alone? This has been an issue which has exercised the UK courts for some time with judges favouring the stricter latter approach.
• Is a shape trade mark precluded from registration where no one prohibition (for example “technical result” or “nature of the goods”) applies to all of the essential characteristics of the shape?
• Does the prohibition applying to a shape, whose features are necessary to obtain a technical function, also apply to a shape whose features are necessary as a result of manufacturing?

In response to those questions, the CJEU has ruled as follows:

• Evidence showing that the trade mark has acquired a distinctive character must consist of evidence that consumers recognise the shape alone, not just that they recognise the shape combined with any other trade marks which may also be present. It had previously been held that Nestlé’s evidence did not show this was the case.
• One of the ‘shape prohibitions’ must apply to all of the essential characteristics of the shape in order to exist as the ground for refusal of that trade mark application.
• If the features of a shape are a necessary result of manufacturing, then those particular features may not fall under the prohibition relating to features which are necessary to obtain a technical function.

The ruling will now go back to the High Court for a decision in the case. Whilst this ruling provides a small window of opportunity for Nestlé to argue that the ‘shape prohibitions’ should not apply to its trade mark, it appears unlikely that it will be granted a trade mark registration because of the weaknesses in showing that the shape has acquired distinctiveness through use.  In countries where the shape of a Kit Kat bar is easily recognisable some commentators have found this judgment harsh. Nestlé carried out surveys in which respondents were shown the trade mark set out above and asked a series of questions about the trade mark. In one of the surveys 90% of the respondents referred to Kit Kat in their answers, and although survey results are inherently treated with extreme diffidence by the UK courts, the results are telling in this instance.

We know the benefits of attempting to achieve trade mark protection for a 3D shape, but this case identifies the hurdles which need to be overcome before being granted such a perpetual monopoly.

The key points identified by this case are:

• If the shape does not have a distinctive character it is essential to show that customers will recognise the product from the shape alone, and draw a link between that product and your business.
• It is a factual analysis in each case but if all the essential features of the shape you wish to protect either (i) are as a result of the nature of the goods themselves, (ii) necessary to achieve a technical function, or (iii) add substantial value to the goods, then a trade mark will not be granted registration.
• Features of the shape, which come about as a result of a manufacturing process, will not, in themselves, be grounds for refusal under the ‘technical function’ prohibition.

If you would like to discuss any of the issues raised in this article, please contact Simon Miles – Head of Intellectual Property or any member of the Edwin Coe Intellectual Property team.

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