Three Dimensional Trademarks and the EU scuffle

Earlier in the previous year, Nestle` had filed an application for trademark registration in the UK for registering its four fingered bar of KIT-KAT as a three-dimensional mark. Nestle` has been one of the biggest companies that enforce Intellectual Property Rights to a commendable extent. So far, IP Assets of the company comprise of 340 strategic brands protected by 75,000 trademark registrations in different countries around the world and 6000 local brands protected by 28,000 trademark registrations. Also about 9018 granted patents and 6217 pending patents.

This application by Nestle` was challenged by Mondelez, an American based company, owner of several multi-billion dollar brands such as Oreo, and Cadbury.

In order for a trademark, even a three-dimensional trademark to be successfully registered, it is necessary to have acquired distinctiveness in the context of Article 3(1)(e)(i) and (ii) of Trademark Directive of EU (section 9 of The Trademarks Act, 1999, India).

That is to say, it should be capable of being recognized exclusively as that of the trademark owner and not anybody else. In this case, the four fingered bars should be recognized by prudent persons not in combination with the Kit-Kat (word-mark) engraved on it, but independently as a shape.

Another important feature is that the shape so formed should not be one which is necessary to be a technical result. This the chocolate though, was portrayed with much prominence to the bars in its advertisements. Thereby forming an integral part of the chocolate itself. The question that arises is whether the bars are just necessary shapes in order to arrive at a technical result or are an essential feature of the chocolate itself. Opposition by Mondelez was largely based on both of these grounds. The UK Registry also upheld the opposition.

Subsequently, on an appeal to UK high Court, which referred the matter to the Court of Justice of the European Union (CJEU), it has been found that shape of the Kit-Kat bar is not a trademark. Nestle` has failed to prove to the court that consumers could identify the wafer snack by its appearance alone. The Advocate General previously in his opinion, stated that that the application was to be refused both on the technical result exclusion and on being devoid of distinctiveness. The CJEU however, observed that the technical result exclusion does not apply and it should be interpreted as referring only to the manner in which goods in issue function and does not apply to the manner in which goods are manufactured. Therefore, the application was refused solely on the basis of not establishing acquired distinctiveness. Upon appeal to the General Court, there is speculation that more light would be bestowed on the interpretation of “acquired distinctiveness.”

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