United Kingdom: High Court refers questions on 3D KIT KAT trade mark to the CJEU

United Kingdom

High Court refers questions on 3D KIT KAT trade mark to the CJEU

We reported in August 2013 that the UK Intellectual Property Office (IPO) had rejected Nestlé's application to register the shape of its KIT KAT bars as a 3D trade mark following objections from rival Cadbury (see our previous article here).

The IPO’s decision was appealed to the High Court where Arnold J, having decided that further clarification is necessary here, has referred a number of questions to the Court of Justice of the European Union (CJEU) in relation to Article 3 of the Trade Marks Directive.

These questions relate to those issues which led the IPO hearing officer to reject the trade mark application in the first place, that is, the question of distinctive character and whether the shape of the KIT KAT bar was necessary to obtain a technical result.  The questions can be briefly summarised as follows:

  • Is it sufficient to prove that a significant proportion of the public would recognise the mark and associate it with the applicant's goods, or must the applicant prove that these people instead rely upon the mark as indicating the origin of the goods? (Arnold J favoured the latter)

 

  • Where a shape consists of essential features which are necessary to obtain a technical result, is registration of that shape as a trade mark precluded by the Directive? (Arnold J indicated that he thought the answer here should be yes)

 

  • Is the registration of shapes which are necessary to obtain a technical result in relation to how goods are manufactured (as opposed to how they function) precluded by the Directive? (Arnold J indicated that he thought the answer here should be yes).

 

These questions were referred to the CJEU in January 2014. Watch this space for further developments as this case progresses.