What the ...! Wathelet gives Nestlé application a bit of stick

Maybe there's a claim here
for false endorsement ...

Today Advocate General Wathelet delivered his very own Opinion in the keenly-awaited Court of Justice of the European Union (CJEU) dispute in Case C‑215/14 Société des Produits Nestlé SA v Cadbury UK Ltd. This is a reference from Mr Justice Arnold in the Chancery Division of the High Court, England and Wales, on an appeal from the Trade Mark Registry. Arnold J's ruling is noted by the IPKat here, and the original decision by the Hearing Officer, the seasoned Allan James, is here; the IPKat hosted a guest comment on this decision by young barrister Katherine Moggridge here.

The item at the heart of the dispute is best known as the ‘Kit Kat’ chocolate-covered biscuit confection, originally launched by Rowntree back in the 1930s. Rowntree was subsequently acquired by Nestlé.

For a long period, the product was sold in two layers of packaging, the inner layer being silver foil and the outer layer being printed paper with a red and white logo bearing the words ‘Kit Kat’, but the current packaging consists of a single layer bearing that same logo. The logo’s appearance has evolved over time, but has not changed greatly. The basic shape of the product has remained almost entirely unchanged since 1935; only its size has been altered slightly. The current appearance of the product without its packaging is shown on the left. Each finger is embossed with the words ‘Kit Kat’ and with sections of the oval shape which form part of the logo.

In July 2010, Nestlé applied to register the three-dimensional sign graphically represented here (‘the trade mark’) as a trade mark in the United Kingdom. Cadbury successfully opposed on the grounds that the mark applied for was devoid of inherent distinctive character and that it had not acquired such a character following the use which had been made of it. Following an appeal, a cross-appeal and a good deal of argument, the High Court decided to stay proceedings and to refer the following questions to the Court for a preliminary ruling:

‘1. In order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of [the Trade Marks Directive, 2008/95, here], is it sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant; or must the applicant prove that a significant proportion of the relevant class of persons rely] upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?

2. Where a shape consists of three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, is registration of that shape as a trade mark precluded by Article 3(1)(e)(i) and/or (ii) of [the Trade Marks Directive]?

3. Should Article 3(1)(e)(ii) of [the Trade Marks Directive] be interpreted as precluding registration of shapes which are necessary to obtain a technical result with regard to the manner in which the goods are manufactured as opposed to the manner in which the goods function?’

Today AG Wathelet advised the CJEU to give the following answers to these questions:

‘(1) It is not sufficient for the applicant for registration to prove that the relevant class of persons recognises the trade mark in respect of which registration is sought and associates it with the applicant’s goods or services. He must prove that only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services at issue.

(2) Article 3(1)(e) of [the Directive] must be interpreted as precluding registration of a shape where that shape has three essential features, one of which results from the nature of the goods themselves and the other two of which are necessary to obtain a technical result, provided that at least one of those grounds fully applies to that shape.

(3) Article 3(1)(e)(ii) of Directive 2008/95 must be interpreted as precluding registration of a shape which is necessary to obtain a technical result not only with regard to the manner in which the goods function, but also with regard to the manner in which they are manufactured.’

There is still plenty to play for, since the CJEU might surprise us all and come up with something quite different. This Kat, however, thinks that AG Wathelet is right and that, when he says

"[The applicant] must prove that only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services at issue",

he is vindicating the point made by Sir Robin Jacob about "limping marks" back in the 1990s in Philips Electonics NV v Remington Consumer Products [1998] ETMR 124 (a limping trade mark is a mark that is never used by itself and which gains support from the "crutch" of another, far stronger trade mark).

How the media reported the AG's Opinion:

• BBC here
• Guardian here
• Marketing here