No trademark for Kit Kat shape, says CJEU adviser
Nestlé’s attempt to register the shape of its four-finger Kit Kat chocolate bar as a trademark did not comply with EU law, an adviser at Europe’s highest court has said.
In a decision handed down today, June 11, Advocate General (AG) Melchior Wathelet at the Court of Justice of the European Union (CJEU) opined against Nestlé in its long-running dispute with rival chocolate maker Cadbury.
Wathelet said that under EU law a shape cannot be registered as a trademark if it has features that are “necessary to obtain a technical effect”.
Nestlé and Cadbury have been disputing the shape of the chocolate bar in the UK since 2011 in a case that the English High Court referred to the CJEU.
The latest decision means that the English court may now reject the application.
In July 2010, Nestlé sought to register the 3D shape of a Kit Kat with four ‘fingers’ of chocolate as a trademark at the UK Intellectual Property Office (IPO).
Cadbury opposed the application in January 2011.
In a decision handed down in 2013, an IPO examiner said that Nestlé’s proposed mark was “devoid of inherent distinctive character”.
According to the decision, the shape had three features overall, two of which cannot be granted registration.
The examiner said that the first feature, the Kit Kat’s rectangular shape, “resulted from the nature of the goods” and was eligible for protection, but only in relation to cakes and pastries.
But the other two features—the presence, position and depth of grooves along the bar, as well as the number of the grooves, which determine how many ‘fingers’ of chocolate there are—are necessary to obtain a technical result, the IPO said.
As a result, the application was rejected.
Both Nestlé and Cadbury appealed against that decision to the English High Court.
The court stayed the case and asked the CJEU to review three questions.
The first asked whether, when determining distinctive character, it is sufficient for the applicant to prove that a significant proportion of the relevant people associate the mark with the applicant.
Second, the court asked, “if a shape has three essential features, two of which are necessary to obtain a technical result, should trademark registration be denied?”
The third concerned whether the EU’s Trade Marks Directive should be interpreted as preventing registration of shapes that are necessary to obtain a technical result.
In his decision, Wathelet said that the directive “must be interpreted as precluding registration of a shape which is necessary to obtain a technical result”.
“Not only with regard to the manner in which the goods function, but also with regard to the manner in which they are manufactured,” he added.
Although Wathelet’s opinion is not binding, the CJEU is thought to follow the AG’s opinion in 80% of cases. After the CJEU has ruled on the case it will return to the English High Court.
A spokesperson for Cadbury’s parent company Mondelez International told WIPR: “We welcome this guidance from the AG but it would be inappropriate to comment further before the CJEU’s final ruling later this summer.”
A Nestlé spokesperson said the company will review the AG's opinion and that it is looking forward to the CJEU's final decision.
"Kit Kat is a much loved and unique shape, which has been used for 80 years," the spokesperson added.
