A break for Kit Kat?

In the CJEU’s latest ruling in Nestlé v Cadbury, questions included whether elements of the shape should be considered separately and have to fulfil each exclusion criterion, as Rachel Montagnon, Sarah Burke and Joel Smith of Herbert Smith Freehills report.

The Court of Justice of the European Union (CJEU) has ruled on a reference from the English High Court concerning whether shapes, specifically the 3D shape of the four-finger Kit Kat chocolate bar, can be registered as trademarks.

In Nestlé v Cadbury, C-215/14 the CJEU has given owners of products with well-known shapes some encouragement, as it said that such shapes can be registered as trademarks and held to be distinctive on the basis of public perception of the shape, separate to any brand name or logo applied to it. This may prove to be a powerful tool in the race to protect shapes from brand dilution.

The main area of complexity was the discussion of how the exclusions to registrability were to be applied to the shape—should each element of the shape be considered separately and have to fulfil each exclusion criterion, or could the shape be assessed as a whole?
The CJEU found that a shape mark will be precluded from registration if the grounds for refusal of registration of a shape mark are fully applicable to the shape at issue—that is, each individual essential feature, which is a much easier requirement to avoid than a compilation approach (where at least one feature fails each criterion).