Incorporating shapes into branding – does a shape identify your products?

Some brands believe that the shape of their goods contributes significantly to their brand recognition. Shape trade marks are not just theoretically possible; they have been registered, and one particular ongoing dispute surrounds the well-loved shape of the Kit Kat. On 17 January 2014, the UK High Court referred various questions to the CJEU in the case of Société des Produits Nestlé SA v Cadbury UK. The questions seek to determine the exact circumstances in which shapes should and should not be registered as trade marks and, in particular, the exact scope of the shape exclusions which exist in the Trade Marks Directive 2008. If your customers recognise the goods you sell as originating with your business because of their unique shape, this case is of importance to your business.

On 17 January 2014, in the case of Société des Produits Nestlé SA v Cadbury UK, Arnold J referred questions to the CJEU to determine the precise circumstances in which a trader may secure a perpetual monopoly in the shape of a product by registering it as a trade mark. The shape at issue in the case was the well-known shape of the four-finger chocolate-coated wafer bar sold under the trade mark Kit Kat. On 8 July 2010, Nestlé applied to register the Kit Kat shape in Class 30 for chocolate and various related goods. The application was accepted by the Trade Marks Registry on the basis that, although the shape was devoid of inherent distinctive character, the applicant had shown that it had acquired distinctive character as a result of the use made of it prior to the application date.

Cadbury opposed the application on various grounds including that registration should be refused under the provisions of the Trade Marks Directive 2008 which prohibit the registration of marks devoid of distinctive character and the registration of shapes with certain characteristics, namely, where the shape results from the nature of the goods themselves or where the shape is necessary to obtain a technical result. Importantly, the latter 2 prohibitions (Article 3(1).

The Hearing Officer held that the registration of the trade mark in respect of everything except for cakes and pastries would be contrary to Article 3(1)(e)(ii) because the shape resulted from the nature of the goods themselves and it was thereby devoid of distinctive character for chocolate and related confectionary.

In considering the issue of acquired distinctiveness, Arnold J commented that he believed that the Hearing Officer should also have found the trade mark devoid of distinctive character for cakes and pastries. He also commented that the law on acquiring distinctive character was not clear enough and required questions to be referred to the CJEU. The sign does not have to be visible to consumers at the point of purchase, but it should confirm the authenticity of the goods and Arnold J was sceptical that the Kit Kat shape performed that function, otherwise Nestlé would not include the trade mark Kit Kat on each wafer bar. The question referred by Arnold J was whether the applicant must prove that a significant proportion of the relevant class of persons rely upon the mark as indicating the origin of goods or whether it is sufficient to prove they recognise the mark and associate it with the applicant’s goods. He indicated that his view was that the latter requirement should be met.

In respect of the shape exclusions, he also referred questions regarding the interpretation of the exclusion for registrations of shapes resulting from the nature of the goods themselves and those necessary to obtain a technical result. At issue in particular was whether, if some features fell foul of the former and some of the latter, this sufficed to prohibit registration. As regards the technical result, it was also appropriate to ask if that was a result that formed a part of the manufacturing process or a result of the manner in which the goods functioned. Arnold J expressed his own view that a mixture of features falling foul of one or the other requirements was sufficient and that the relevant technical result was that during the manufacturing process. The Judge was clearly not minded to grant Kit Kat a perpetual trade mark monopoly over the shape of its famous bar. The case illustrates that protection for shapes is still circumscribed by various limitations, the policy basis for this being that there are other intellectual property rights (of a more limited duration) which may protect the shape of a trader’s products.

As brands such as Kit Kat and Lego seek whatever legal means possible to enhance their commercial positions, there remains a valid question as to the extent shapes should remain available for all to use save for short periods of monopoly over unusual innovations. While you may not be Nestlé or Lego, it may be worth considering a shape registration if your product’s shape has come to indicate the origin of your goods.