Can you register a 3D four finger chocolate bar shape as a trade mark?

2nd February 2016

Can you register a 3D four finger chocolate bar shape as a trade mark?

On 20 January 2016 the High Court ruled that Nestlé could not register the 3D shape of their well-known four finger Kit Kat chocolate bar as a UK trade mark. The High Court’s decision is the most recent in a series of decisions, including those of the Intellectual Property Office (IPO), the High Court and the European Court of Justice (ECJ) in relation to whether it is possible to register a 3D shape as a trade mark.
What is the law?
Under the UK Trade Marks Act 1994 section 3(1)(b) and Article 7(1)(b) of the Community Trade Mark Regulation 1993, an absolute ground for refusing to register a trade mark is that it is ‘devoid of any distinctive character’, that is, it is not perceived by the average consumer of the goods in question for which the trade mark application has been made as having a unique or distinct quality such that it can distinguish one party’s goods and services from another
In July 2010, Nestlé applied to register a UK trade mark for the 3D shape of its four finger Kit Kat bar alone; that is, without the Nestle logo and KIT KAT name. The application was filed in Class 30 including for chocolate, biscuits, cakes and pastries.  The application was initially accepted by the UK Registry which had found that the mark had acquired distinctive character as a result of use made of it before July 2010 (the date of the application).

Cadbury opposed the application, citing that the shape of the bar lacked distinctive character. The dispute between Nestlé and Cadbury progressed to a hearing in March 2013. The hearing officer at the IPO ruled that the four finger bar lacked a distinctive character in relation to all the goods specified in the application except for cakes and pastries. Nestlé appealed the IPO’s decision to refuse the registration of the four finger 3D shape. Cadbury then cross-appealed the decision to permit its registration for cakes and pastries.

In the High Court, Mr Justice Arnold agreed with Cadbury and held that the hearing officer was wrong to find that the four finger 3D shape had acquired distinctiveness. But, he referred a number of questions to the ECJ, including one relating to acquired distinctiveness. In particular, he sought guidance as to whether, in order to show that a trade mark had acquired distinctiveness, the applicant had to prove that a significant proportion of the relevant class of persons merely had to recognise and associate the mark with the applicant’s goods, or if more was required that is, whether  the applicant had to demonstrate that a significant proportion of the relevant class of persons actually rely upon the mark as a means of indicating the origin of the goods.

The ECJ delivered its ruling in September 2015 and, unfortunately, it did not expressly answer Mr Justice Arnold’s question relating to acquired distinctiveness but instead the ECJ reformulated the question.
The findings
The High Court found that, for Nestlé to prove that their potential trade mark has acquired a distinctive character, it must demonstrate the following:

  1. that at, the relevant date (July 2010), a significant proportion of the relevant class of persons perceived the chocolate bar as originating from Nestlé, because of the four finger shape

  2. in determining 1, the applicant must prove that the four finger shape alone, as opposed to any other trade mark, identifies Nestlé as the originator of the chocolate bar

In other words, that because of the four finger 3D shape alone, without use or reference to other trade marks (such as the words KIT KAT or the Nestlé logo), a significant proportion of consumers of chocolate bars had to perceive the four-finger bar as originating from Nestlé. If Nestlé could establish this, they could show that the four finger 3D shape met the requisite acquired distinctiveness threshold.

The High Court ruled that Nestlé had failed to show acquired distinctiveness of the four-finger bar and affirmed the Hearing Officer’s reasoning. Due to the four-finger 3D shape not featuring in Nestlé's recent promotions and advertisements for Kit Kats, the use of an opaque wrapper (which concealed the four finger 3D shape), the fact that the wrapper did not show a picture of the four finger 3D shape (except for a special type of Kit Kat, put on the market a few months before filing the application for the four finger 3D shape) and the absence of evidence that consumers used the four finger 3D shape as form of verification to check they have bought a Kit Kat, this suggested that the shape had not acquired the necessary distinctiveness.

Mr Justice Arnold also confirmed that it is not sufficient for the applicant to simply show that a significant proportion of the relevant class of persons recognise the sign in question and associate it with the applicant’s goods - instead reliance on that shape alone as denoting the origin of the goods is required. Mr Justice Arnold found that it was likely that consumers relied upon the word mark ‘Kit Kat’ and other pictorial marks in order to identify the trade origin of the goods, but only associated the shape with Kit Kat.
So what?
The High Court does not appear opposed to the concept of allowing 3D shapes to benefit from registered trade mark protection (provided the shape does not fall within one or all of the absolute grounds for refusal of registration identified in statute). However, if parties are considering registering a 3D shape as a trade mark, use of the potential 3D shape should be extensive and feature heavily in promotional material for a lengthy period of time in order to enable to consumers to rely on the shape as an indication of origin.

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