Advocate General (“AG”) Wathelet recently delivered his Opinion on three questions referred to the Court of Justice of the European Union (“CJEU”) by the High Court of England and Wales (on appeal from the UK’s Intellectual Property Office) regarding the dispute between Nestlé and Cadbury over Nestlé’s application in the UK to register a trade mark (“TM”) for the shape of their Kit Kat bar.

The 3D mark at issue is the shape of the four-fingered bar without the words Kit Kat or any symbols embossed on it, which Nestlé claims has acquired distinctive character through use (see image of four-fingered bar at paragraph 11).

The first question referred to the CJEU regarded the test for proving acquired distinctiveness. In his Opinion the AG said an applicant must prove that the TM (the shape mark without any embossing), by itself and in the absence of any other TMs which may be present, indicates, to the average consumer, without any possibility of confusion, the exclusive origin of the goods or services concerned.

The second question related to whether a shape with three essential features: one resulting from the nature of the goods themselves (in respect of the Kit Kat Bar the basic rectangular slab shape) and two others which are necessary to obtain a technical result (the breaking grooves, and the angles of the sides of the bar and of the breaking grooves), would be precluded from registration under Article 3(1)(e) of the TM Directive 2008/95. The AG said a mark would be precluded from registration, where at least one of the grounds of Article 3(1)(e) fully applies to the shape.

Finally, regarding the question as to whether a mark must be precluded from registration if its shape is necessary to produce a technical result either in the way the goods function or in the way they are manufactured, the AG ruled that if the mark’s shape is necessary to produce a technical result registration should be precluded.  

The CJEU’s ruling is expected in the coming months. Should it choose to follow the AG’s Opinion it will strike a serious blow at Nestlé’s ability to prevent competitors from making rival copy cat bars!

Contributed by:
Colette Brady – Associate
Charleen O’Keeffe – Associate