Nestlé’s application to obtain a UK trade mark for the shape of a KitKat dates back to 2010. The application was originally accepted on the basis that although the shape lacked inherent distinctiveness, it had acquired distinctiveness through use.
Cadbury then opposed Nestlé’s application, prompting the UK Intellectual Property Office (IPO) to conduct a more detailed analysis of the KitKat shape. They said that the shape was dictated by the nature of the goods and the need to achieve a technical function (easy wafer snapping). Where a shape is purely functional, it will not qualify for trade mark protection (makes sense – a football has to be round). On reflection, the IPO also decided that the mark had failed to acquire distinctive character through use. On that basis, Cadburys’ opposition was largely upheld, leaving Nestlé with a trade mark covering only cakes and pastries.
Nestlé appealed to the High Court, successfully arguing that a KitKat’s shape is not purely functional and so could merit protection if it had acquired distinctiveness through use. They also pointed to survey evidence showing that even when the other branding was removed, 90% of consumers still recognised the four finger shape mark as a KitKat.
Unsure whether recognition was enough to prove acquired distinctiveness, Arnold J asked for a ruling from the Court of Justice of the European Union (CJEU) on whether the relevant test is:
- recognition, or;
- whether consumers rely upon the shape mark (as opposed to any other trade mark) to indicate the origin of the goods.
If it’s the former, Nestlé would be home and dry, but if it’s latter, they would be in trouble – we rely on the branded wrapping to identify a KitKat, rather than the shape, which is hidden until the packaging is removed.
The CJEU answered the first part of Arnold’s question, ruling that recognition was insufficient to prove acquired distinctiveness. Unfortunately, owing to a translation error, they failed to answer the second part. Arnold decided that the CJEU’s ruling provided enough information for him to conclude that they agreed with his second formulation of the acquired distinctiveness test and so rejected Nestlé’s appeal.
The fact that Arnold’s question was lost in translation leaves a chink of light for Nestlé. They may decide to fight on. All this is part of a worldwide wafer battle – the shape is registered as a trade mark in South Africa, where it has been successfully used to combat copycats.
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