ECJ rules that four fingered Kit Kats not distinct enough to be trademarked

The Court of Justice of the European Union (ECJ) has ruled that Nestlé cannot trademark its four fingered Kit Kat because the shape is not distinctive enough for consumers to associate it with the chocolate bar.  Nestlé had tried to trademark the four finger Kit Kat in 2010 but its rival Cadbury had registered an objection.  In 2013 the UK Trade Marks Registry refused to register the trademark and Nestlé appealed to the High Court.  Arnold J, sitting at the High Court, referred the following three questions to the ECJ:-

• “In order to establish that a trade mark has acquired a distinctive character following the use that had been made of it within the meaning of Article 3(3)[of the Directive], is it sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant; or must the applicant prove that a significant proportion of the relevant class of persons rely upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?” 

• “Where a shape consists of three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, is registration of that shape as a trade mark precluded by Article 3(1)(e)(i) and/or (ii) of Directive 2008/95?” 

• “Should Article 31(e)(ii) of Directive 2008/95…be interpreted as precluding registration of shapes which are necessary to obtain a technical result with regard to the manner in which the goods are manufactured as opposed to the manner in which the goods function?”

On 16 September 2015, the ECJ indicated that for registration, the applicant must prove that the mark alone identifies the origin of the goods (e.g. without the presence of logos/packaging to assist them) and that mere recognition of the shape was not enough to prove acquired distinctiveness. Nestlé has argued that 90% of participants in a street survey had associated the brand with the four finger shape but this was not enough to convince the ECJ that it should be protected by a European trademark.  The ECJ opined that the shape also fell under the scope of obtaining a technical result and, therefore, could not be protected by a mark.  The case will now go back to the UK High Court for a final ruling and if Nestlé are not successful, its rivals will be able to market similar four finger chocolate bars without fear of being sued for trademark infringement.

The full judgment in Société des Produits Nestlé SA v Cadbury UK Ltd (Case C-215/14) can be found here.

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