In January 2016 and January of this year I wrote short pieces about the difficulties trade mark owners face in trying to secure, by way of a UK or EU registered trade mark, protection against a competitor copying the 'shape' of their goods.
I explained that registering the shape of a product as UK or EU trade mark, let alone subsequently successfully enforcing that registration against a third party infringer, is not an easy task. To illustrate the point, I discussed two (then) recent cases, involving Nestlé's attempt to register the three dimensional shape of its famous four-fingered "KitKat" chocolate covered biscuit as both a UK and EU registered trade mark, omitting the words "KitKat" (which are embossed on each finger when the product is sold).
In summary, despite Nestlé's survey evidence showing that a significant proportion of the relevant UK public recognised the 4 fingered shape as being a "KitKat", the English High Court held that Nestlé had failed to prove that the shape had, through extensive use over many years, come to be seen and regarded by average UK consumers 'as a trade mark' (i.e. as indicating the commercial origin of a chocolate covered biscuit having that shape). The Court held that Nestlé had only proved that the public recognised the shape and associated it with KitKat products. As a result, it could not be registered as a UK trade mark.
In addition, the General Court of the EU held that Nestlé could not register the same shape as an EU trade mark, due to the fact that the evidence filed by Nestlé did not demonstrate that the shape had, through use, acquired distinctive character (and thus had come to be seen and regarded 'as a trade mark') in all countries of the EU. In particular, the evidence did not demonstrate that the shape was regarded 'as a trade mark' in Belgium, Ireland, Greece or Poland. However, the General Court did not agree with the English High Court and found that the evidence filed by Nestlé did demonstrate that the shape had, through use, acquired distinctive character (and thus had come to be seen and regarded 'as a trade mark') in the UK. It was not necessary for the shape to appear on the packaging for the product, or to be visible at the time of sale. Visible use of the shape when the product was consumed would suffice to enable the shape to acquire distinctive character through use and thus come to be seen and regarded by average consumers 'as a trade mark' (i.e. as indicating the commercial origin of chocolate covered biscuits having that shape).
The most recent chapter in this ongoing saga has just been written by the English Court of Appeal ("CoA"), upon hearing Nestlé's (unsuccessful) appeal against the English High Court's decision refusing to register the shape mark as a UK trade mark.
Despite the General Court's finding that the evidence filed by Nestlé did demonstrate that the shape had, through use, acquired distinctive character (and thus had come to be seen and regarded 'as a trade mark') in the UK, the CoA disagreed and held that the General Court's decision did not bind them and in any event was flawed. There was no evidence that the shape of the KitKat bar had been used to promote or market KitKats in recent time - the shape had not featured in Nestlé's promotional and advertising materials; the product had only ever been sold in an opaque wrapper and the wrapper did not show the shape of the goods (save for a short time); and there was no evidence that consumers used the shape of the goods post purchase in order to check that they had chosen the product from their intended trade source.
Of particular interest to brand owners was the very clear statement by the CoA that it is not possible to register inherently non-distinctive shapes as trade marks unless those shapes are used 'as trade marks' and, as a consequence of such use, a significant proportion of the relevant public 'perceive' the goods in question as originating from a particular business. It is not enough for average consumers to recognise a shape and associate it with goods made by a particular business. They must perceive the shape as a 'badge of origin', such that they would rely upon it alone to identify the product as coming from a particular source.
As Lord Justice Floyd held:
"For the shape in question here to have acquired distinctiveness, the court must be able to conclude that a significant proportion of consumers, seeing it used in relation to chocolate bars, would perceive it as designating the goods of a particular undertaking….I have found it helpful to have in mind a basket of unwrapped and otherwise unmarked chocolate bars, in the shape of the mark applied for, available for selection in a shop or supermarket. For there to be acquired distinctiveness, the consumer must perceive these goods as being KitKats, or as originating from the people who make KitKats, and not from others. A perception that they looked like KitKats is not enough. Acquired distinctiveness carries with it an indication of exclusive trade origin."
As result of the CoA's decision, in order to be able to register the shape of their goods as a UK trade mark, brand owners face the practical difficulty of being able to lead evidence proving that, as a result of extensive use and effort, they have educated a significant proportion of the relevant public to regard the shape as a 'badge of origin, telling them from whom the goods originate'. The CoA rejected the suggestion that the effect of their decision would be to render shape marks of the kind in issue effectively unregisterable as trade marks. At the very least they have set a high evidential hurdle for brand owners to overcome