Acquired distinctiveness of product shape marks: AG Wathelet does not “rely” on the UK approach – but on what else?

Not so very long ago the IPKat hosted this guest post from Roland Mallinson on the subject of Nestlé's  application to register its chocolate finger shape as a trade mark: has this application been treated to a premature burial, he asked.  While it's fair to say that Roland's view is still a minority one, his conclusion has been endorsed by Thomas Farkas, from the Munich office of Wragge Lawrence Graham & Co. In his thoughtful comments which we reproduce below, Thomas adds the following dimensions to this already three-dimensional debate:

Quite a few blogs and newsletters [see eg here, here, here and here] have summarised Advocate General Wathelet's Opinion of 11 June 2015 in Case C-215/14 as indicating that Nestlé's unbranded KitKat finger shape (right) will not beregistrable as a trade mark in the UK for lack of proof of acquired distinctiveness. But this is not what AG Wathelet actually said. The misconception on the side of those blogs is due to the fact that AG Wathelet did not, at least not explicitly, answer the decisive question asked in the referral by the High Court, England and Wales (para 54). The High Court wanted to know whether, 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 Mark Directive, 

1. it was 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;
2. or if the applicant had to prove that a significant proportion of the relevant class of persons relies upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?

 

Condition 1 is obviously easier to establish than condition 2 since shape marks are hardly ever used without accompanying word- and/or device trade marks that will “also be present”. This is also true for the “Kit Kat” chocolate bar that has been marketed for many decades in a red wrapper with the “Kit Kat” logo. The logo is also embossed on each of the four “chocolate fingers”:

    

Condition 2 sounds odd to trade mark lawyers outside the UK, especially Germany, to say the least. A proof that the average consumer “relies” on the trade mark has never been requested by trade mark instances or civil courts. 

But courts in the UK – as we learn from the referral (paragraph 46 to 48) – hold that it is not sufficient if consumers recognize a product’s source by its shape. Under the UK approach, the requirement is not merely to furnish a demographic survey showing that a majority of persons would attribute the shape of the goods to a single company. 

UK courts have been well aware that it is far from being clear that the “reliance” requirement is in line with the Trade Mark Directive. They had already made two attempts to have the issue clarified by the CJEU by way of referral, namely in the “Viennetta” ice cream shape case (C-7/03) and in Dyson(C-321/03). The CJEU however gave no answer: Viennetta was settled, and Dyson was decided on other grounds. 

What answer does AG Wathelet suggest? And what is his position regarding the “reliance” requirement as developed by the UK courts? He says: 

“It is not sufficient for the applicant for registration to prove that the relevant class of personsrecognises 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 concerned.” 

Since AG Wathelet avoided any reference to the “reliance” criterion it seems clear that he does not endorse the UK approach. So “reliance” within the meaning of the UK approach is not needed in his view. But a mere association with the applicant’s goods or services does not seem to be sufficient, either. 

As far as AG Whatelet requests that the indication of origin should be “without any possibility of confusion” he merely refers to the basic function of a trade mark as summarised in Philips v Remington (Case C-299/99, para 30) and Ansul v Ajax (Case C-40/01, para 36). The General Court, in a similar way, requires that a trade mark must be able to distinguish a product’s or service’s origin “directly and with certainty” (“de façon immediate et certaine”: Case T-234/01 – Stihl v OHIM). 

Consumers make assumptions about the origin
of goods on the basis of their shape

Still, the qualification AG Wathelet suggests is that 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 the origin of the goods or services at issue. But what does this mean? It is the view of this post that AG Wathelet does not endeavour to stipulate a new criterion for proving acquired distinctiveness. He does not ask for anything beyond what is required for the distinctiveness of any other trade mark. Use as a trade mark and acquired distinctiveness, enabling the end consumer to distinguish goods as to their origin, will always be deemed present when the relevant class of persons perceives the trade mark in question (in this case: the shape of the goods) as an independent indicator of origin, even where there are other indications of origin to which the public will pay attention likewise. 

The CJEU’s decision in Colloseum v Levi Strauss (Case C-12/12) provides a good example for such a case. It revolved around use preserving trade mark rights within the meaning of Article 15 Community Trade MarkRegulation. This may be the reason why it is, even though mentioned, not in the focus of AG Wathelet’s opinion. In Colloseum the trade mark was not constituted by a product in its entirety, but pertained rather to a part of a product, specifically to a blue-jeans pocket which was designed in a particular way and labelled with a red cloth tab (Levi Strauss & Co.'s famous “Red Tab”, depicted on the right, invented in 1936 – just one year after the “Kit Kat” bar of 1935).

 

In actuality, however, both before and after registration of the trade mark, the use was only of pockets on which the red tags were labelled with the word mark “LEVI’S” (depicted on the left). It was obvious in that case that, when attributing a pair of blue jeans to the manufacturer Levi Strauss & Co., the public was looking also to (and may have “relied” on) the famous “LEVI’S” word mark and not simply and solely at the back pocket with the red fabric tab. The OHIM nevertheless registered the trade mark because it had acquired distinctiveness under Article 7(3) Community Trade Mark Regulation. Referring to the judgment in the "Have a Break" case, Nestlé v Mars(Case C-353/03 para 30), the CJEU confirmed that use as demonstrated served to preserve the trade mark rights and, indirectly (because use preserving a trade mark right is equated to use which creates a trade mark right) that such use was also apt to create such rights “as a trade mark”, i.e. as a distinctive sign capable of and perceived as distinguishing the origin of a product (Case-12/12, paras 32 et seq.). 

This was done on the basis of the findings of the German Federal Supreme Court (which had referred Colloseum to the CJEU) that the class of persons which was being addressed is used to seeing multiple signs and 

“based on the substantial use of the red tab when marketing blue-jeans … [the public] regards this feature of the design as having an independent identification function which is separate from other indicators of origin” (BGH GRUR 2012, 177, 180 para 24 –Stofffähnchen II). 

The survey on which this finding was based had used a picture with a neutralised red tab (in the words of AG Wathelet: “only the trade mark”) without any reference to Levi Strauss & Co., so (again in the words of AG Wathelet) “only the trade mark as opposed to any other trade marks which may also be present” in reality (see illustration, right).

 

There is thus no requirement that the goods must actually be labelled – in the absence of any other sign -- exclusively by the mark applied for or that the consumer pays attention only to that mark and perceives it as the sole indicator of origin or “relies” only on it. 

As in Colloseum, it will suffice that the mark for which the acquisition of distinctiveness is at issue is one of multiple indicators. It is distinctive if – despite the existence of other marks and in addition to such – enables the consumer to attribute the product to a particular manufacturer. As in Colloseum, it will be of no consequence whether this attribution is in fact achieved solely based on the registered mark – in the case of multiple marks – or whether the consumer might, additionally, also be looking to other trade marks. 

Any other approach would (contrary to the basic tenet of Colloseum) render it practically impossible for secondary or tertiary marks to acquire distinctiveness, particularly product shape marks, packaging colours or other design elements. Such marks are typically combined with one or more word marks or with other manufacturer logos. 

This seems to be in line with the requirements of acquired distinctiveness as formulated by the CJEU originally in Chiemsee (Joined Cases C-108 and 109/97, para 52) and recently reiterated in Sparkassen red (Joined Cases C-217 and 218/13, para 42) that the evidence put forward had to prove that 

“the relevant class of persons, or at least a significant proportion thereof, identifies goods […]  as originating from a particular undertaking because of the trade mark [in question]” [emphasis added].  

So, has Nestlé, its evidence measured against the criterion suggested by AG Wathelet, proven acquired distinctiveness? Probably yes. Nestlé had submitted survey evidence. As the survey evidence submitted in Colloseum, the trade mark on the right was shown to the interviewees without the well-known word mark that in real life is used in connection with it.

More than 50% of the interviewees -- just on seeing the shape alone and “as opposed to any other trade marks” – were sure (“without any possibility of confusion") that the product had an exclusive and unique commercial origin. This shows that the shape alone indeed is capable of indicating and distinguishing its commercial origin.

What else could be required to establish an acquired distinctiveness?