Shapes must be distinctive 'in their own right' to qualify for trade mark protection, says EU legal advisor

A shape should not qualify for trade mark protection on the basis of its prior use if consumers of a product for which it is used would not recognise and associate it with the product's owner "if used separately" from the product's packaging or branding. If consumers were not left "without any possibility of confusion" and could also link the shape to another brand then applications to register them as a trade mark should be rejected, advocate general Melchior Wathelet said in a non-binding opinion on a case before the Court of Justice of the EU (CJEU).

The CJEU has been asked by the High Court in London to help interpret provisions of EU trade mark law to help the High Court resolve a dispute between chocolate manufacturers Nestlé and Cadbury. Nestlé wants the High Court to overturn an earlier ruling by the UK's Intellectual Property Office (IPO) that the shape of its Kit Kat bars cannot be trade marked.

Nestlé has claimed that a consumer survey shows that most consumers associate the shape of its Kit Kat bars with its brand. The findings of the survey demonstrate that the shape has acquired a distinctive character in the UK, it has argued.

However, advocate general Melchior Wathelet has said that Nestlé, and other brand owners, should have to prove that consumers clearly link a shape to their brand for the shape to merit trade mark protection.

"It is not sufficient for the applicant for [trade mark] registration to prove that the relevant class of persons recognises the trade mark in respect of which registration is sought and associates it with the applicant’s goods or services," Wathelet said. "He must prove that only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services at issue."

The legal test for determining whether there is a sufficient link between marks and brands to merit trade mark protection involves evaluating what the 'average consumer' of a type of product perceives when they see a mark, such as a shape. The average consumer is deemed to be reasonably well informed and reasonably observant and circumspect.

But Wathelet also said that the average consumer cannot "reasonably be expected" to determine precisely "the legal identity" of the business behind a mark.

"It seems that the old ‘elephant test’ isn’t enough for trade mark lawyers," intellectual property law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said. "Despite the fact that consumers know a Kit Kat when they see one, the advocate general has said that the Court needs to see evidence of a level of acquired distinctiveness way beyond 'mere recognition'. The opinion is entirely consistent with the CJEU's previous refusal to grant trade mark protection for Lego bricks and so comes as no surprise."

The Trade Mark Directive recognises that shapes or other signs capable of being represented graphically can qualify for trade mark protection if they are "capable of distinguishing" one company's goods or services from those of its rivals. However, there are many grounds on which applications for trade marks can be refused, or where trade marks previously granted can be revoked.

The Directive requires applications for the registration of trade marks to be refused if the marks cannot be distinguished as belonging to a particular company. If a mark's shape is borne out of the nature of the product that it is, or takes on a form that is necessary to obtain a technical result, then applications for registering those marks as trade marks must be rejected.

The IPO previously ruled that the shape of Kit Kat bars is not distinctive enough on its own to enable it to be associated with the Nestlé brand since there are similar products available on the UK market.

 The IPO also found that the shape of Kit Kat bars takes on three essential features. It said the shape is borne from the nature of the shape of moulded chocolate bars. It also determined that the shape is necessary to obtain two technical results, namely the breaking of the bars and determination of portion size.

The High Court, however, has asked the CJEU whether trade mark applications can be refused if a different basis for refusing trade mark registration is relevant to the different essential features identified in a mark.

In his opinion, advocate general Wathelet said that it does not matter if three essential features of a shape are deemed to engage three separate grounds for refusal of trade mark protection provided that at least one of the grounds for refusal "fully applies to that shape". Where that is the case, shape trade mark applications must be rejected, he said.

Wathelet also said the CJEU should rule that provisions of the Trade Mark Directive which state that shapes cannot be trade marked if they take on a form that is necessary to obtain a technical result apply regardless of whether the technical result relates to the way "the goods function" or the way in which "they are manufactured".

The CJEU's judgment in the case is not anticipated until later this year. The ruling it issues will guide the High Court in determining whether Nestlé should win a monopoly right to use the shape of its Kit Kat bars in the UK.