CJEU said it was possible to register a 3D shape trademark, but only when the shape alone has distinctiveness to the brand, in isolation of any branding.
It reaffirmed an earlier finding by the Advocate General. A UK High Court will now decide whether to grant Nestlé a UK trademark.
Legal experts say the UK High Court is likely to reject trademark registration. However, they warn that any competitors should exercise caution before launching any four-fingered chocolate bars.
Bar now high for shape marks
James Sweeting, senior associate in the Media, Brands & Technology team at Lewis Silkin, commented: “The result of the ECJU’s decision is that the ‘bar’ for the registration of shapes has now been set very high.
“This decision will be seen by some as carte blanche for competitors to release their own four-fingered chocolate bars. While we may see some more of those seeping onto supermarket shelves, competitors will still have to tread carefully so as to avoid any infringement of other IP rights held for the KitKat bar.”
ConfectioneryNews has contacted Nestlé and is awaiting comment.
Mondelēz said in a statement: “We are pleased by this ruling by the European Court of Justice which is in line with our contention that the shape of the Kit Kat bar is not distinctive enough to be protected as a trade mark.
The ruling will now go back to the UK High Court and we await their decision,” it said.
UK courts expected to reject trademark
Lee Curtis, trade mark attorney and partner at HGF, said he expected the High Court to ultimately find against Nestlé because the KitKat shape is not sold alone in transparent packaging and the word mark KitKat is so dominant.
“ If you go into a store, do you buy the bar by shape alone?" Curtis asked.
Sally Britton, Intellectual Property lawyer at Mishcon de Reya, agreed it was unlikely the UK court would register the KitKat shape.
“If the goods display any other trademarks, such as the brand name KIT KAT, then it will be very difficult for brand owners to show that the public rely on the shape of the goods alone, as opposed to the brand name, to identify them,” she said.