"Have a Break, Have a Kit Kat "and Three-D trademarks

Who doesn’t feel like a break? Let’s talk about chocolate bars and three-D trademarks!

On 8 July 2010, Nestlé applied for protection of a three-dimensional trademark for its Kit Kat chocolate bar in the UK. Each bar is engraved with “Kit Kat” in relief with the characteristic oval. However, the trademark application did not include these features; it referred only to the shape of the product for chocolate confections.

When the application was made public, Cadbury filed an objection to keep Nestlé from gaining a monopoly on the three-dimensional trademark in the shape of a chocolate-coated, four-finger wafer biscuit bar. Although the applicant proved that the shape had become distinctive through use, in 2013 the UK examiner decided that the mark was not intrinsically distinctive and rejected the idea that the mark was distinctive, based on article 3 of the Trade Mark Act 1994, paragraph 1, letters b and e, indents i and ii of the Trademark Directive. A request for a preliminary ruling and procedure was lodged with the Court of Justice, and the High Court accordingly suspended the appeal proceedings filed by Nestlé. These were the issues submitted for a preliminary ruling:

1) To prove that a trademark has become distinctive through use, the applicant for registration cannot just demonstrate that the average consumer of products or services belonging to the category in question recognizes the mark and associates it with the applicant’s products; the applicant must show proof that the mark it wishes to register indicates the products’ exclusive origin when compared with any other trademark on the market, without the possibility of confusion.

2) The point is whether the product can be identified with no likelihood of confusion as the Kit Kat wafer marketed by Nestlé solely by its shape, used separately from the wrapper or any other reference to “Kit Kat”, and without including any other mark that is also present. When a shape is made up of three essential characteristics, and one is necessitated by the very nature of the product and the other two are necessary to obtain a technical result.

3) Article 3, paragraph 1 e) ii) of Directive 2008/95 must be interpreted as stating that the presence of grooves gives the product the shape needed to obtain the sought-after technical result; i.e., to allow the consumer to break the biscuit fingers apart easily. The angle of the sides of the product and the angle of the grooves are dictated by a specific chocolate moulding process, i.e., the product manufacturing method.

Should registration be refused? The three causes given in article 3.1.e) of the Trademark Directive are aimed at keeping the essential characteristics of the product that are reflected in its shape in the public domain.

Carolina Sánchez Margareto

IP Lawyer