KitKat TM loss may be beginning of EU and UK divergence
Nestlé lost its appeal yesterday against the trademark rejection of the 3D shape of its four-finger KitKat chocolate bar, potentially marking the beginning of a divergence between EU and UK law.
The English Court of Appeal handed down its decision, finding that the 3D shape could not be registered as a trademark in the UK.
According to Mike Shaw, partner at Marks & Clerk, the decision suggests a potential divergence in EU and UK trademark law.
“There has always been some tension between the UK courts and the Court of Justice of the European Union (CJEU), but Brexit may well encourage some UK judges to be more willing to question and challenge CJEU guidance in the future,” he said.
Leighton Cassidy, partner at Fieldfisher, added that the Court of Appeal specifically referred to the General Court's decision of December 2016 which, in contrast to the Court of Appeal, accepted that Nestle's mark had acquired distinctiveness through use in the UK.
But the Court of Appeal rejected the mark, suggesting a “potential divergence and a less liberal approach in the UK”.
It’s important to remember, though, that the General Court had said that Nestlé’s EU trademark could only registered if it proved distinctiveness in every member state, explained Cassidy.
Yesterday, Chancellor of the High Court Lord Justice Vos, Lord Justice Kitchin and Lord Justice Floyd issued a unanimous opinion.
The most interesting part of the decision for Shaw was the court’s recognition that shape marks are rarely used in isolation.
Kitchin had explained that consumers are not likely to take the shape of a chocolate bar as a badge of origin, in the way they would with a newly coined word.
“The court accepted that customers may recognise shapes, but confirmed that the key issue is whether customers rely on that shape, and that shape alone, to denote the commercial origin of the goods,” said Shaw.
Cassidy added that the case “demonstrates the lengths that brand owners will go to protect their IP and the resources they will invest in securing protection for what will ultimately result in monopoly rights”.
The battle between Nestlé and Cadbury has been going on for nearly a decade, he explained, and Nestlé could still appeal to the UK Supreme Court
Brand owners will now face much more difficulty in securing protection for 3D shape marks in the UK, according to Shaw.
Cassidy agreed, adding that for brand owners the decision is further recognition that it’s more difficult to register non-traditional marks.
“The Court of Appeal has confirmed that the bar is high, something brand owners and their advisers have in reality always known,” he said.
