Many of you will have read the headlines in recent days about the Court of Justice of the European Union's decision that Nestlé's registered EU trade mark for the shape of its 4 fingered chocolate bar (pictured below) is invalid.
The key take-away point for brands owners is that it has now become very difficult to register inherently non-distinctive trade marks (such as shapes, slogans or colours) as EU trade marks. This is because, to be a valid registered trade mark, brands owners will have to demonstrate that their inherently non-distinctive trade mark is seen by average EU consumers as a badge of origin of the goods in question throughout the EU (i.e. in all member states).
So what can brands owners do to try ensure the validity of registered shape, slogan or colour trade marks?
- Use the mark in the form it is registered and make sure you are using in a way consumers will see it as a mark that indicates that the goods originate from your business.
- Avoid using the mark in combination with other trade marks. Nestlé's case failed in the UK (in part) because they had always used their shape mark in combination with the "KIT KAT" mark.
- Teach consumers to see the shape mark as a badge of origin of your products (e.g. via social media campaigns, traditional advertising and the display of your products in retail premises).
- Register new product shapes as registered designs (ideally as both UK registered designs and Community registered designs).
- Do what you can to stop others from using the mark. Without a registered trade mark, you would have to rely on either a registered design or the law of 'passing-off' to do so.