Product Shape and Distinctiveness

Product Shape andDistinctiveness

Arecent decision of the UK High Court concluded that the shape of KIT KATchocolate bar was not registrable as a trademark.

The Facts

The Application

Société des Produits Nestlé SA("Nestlé") applied to register the three-dimensional shape of the KITKat chocolate bar. The applied-for mark (“Mark”) is set out below:

The Trade Mark corresponds to the shape of Nestlé's four-finger KIT KATproduct shownbelow:

The Opposition

Cadbury UK Ltd ("Cadbury") opposed theapplication on the grounds that the Mark was not distinctive. Nestlé responded by assertingthat the Mark had become distinctive at the relevant date by virtue of acquireddistinctiveness.

Thehearing officer concluded the applicant had shown recognition of the Markamongst a significant proportion of the relevant public for chocolateconfectionery but not that consumers relied on the shape to identify the originof the goods. The key factors were:

i) There was no evidence that the shape of theproduct has been featured in the Nestlé's promotions for its goods for manyyears prior to the date of the application;

ii) The product was sold in an opaque wrapper andthe wrapper did not show the shape of the goods;

iii) There is no evidence – and it did not seemlikely – that consumers used the shape of the goods post purchase in order tocheck that they had chosen the product from their intended trade source.

As aresult it seemed likely that consumers rely only on the word mark KIT KAT andthe other word and the pictorial marks used in relation to the goods in orderto identify the trade origin of the goods. They associated the shape with KITKAT (and therefore with Nestlé), but no more than that.

Since itwas necessary to show that consumers relied on the shape mark in order todistinguish the trade source of the goods at issue, the claim of acquireddistinctiveness failed.

The Appeal

Nestléappealed from the decision to the U.K. High Court. The court decided that it wasnecessary to seek clarification of the law from the Court of Justice of theEuropean Union in order to determine the appeal. Eventually the judgedetermined that in order to demonstrate that a trademark hasacquired distinctive character, the applicant must prove that, at the relevantdate, a significant proportion of the relevant class of consumers perceive thegoods as originating from a particular undertaking because of the mark inquestion (as opposed to any other trademark which may also be present).

Whenthis approach was applied the judge agreed with the hearing officer’s decisionand dismissed the appeal.[1]

The Canadian Position

The Canadian position is similar. There is no question thatcolour and shape can help to distinguish the products of one manufacturer fromanother. Shape and colour can also be powerful influences on consumerbehaviour.

But showing that product appearance or get-up has becomedistinctive is not easy to do. There are sound public policy concerns thatarise from an expansive recognition of distinctiveness in the area ofnon-functional product design.  Theconcerns arise from the fact that trade owner in such cases will have anunrestricted monopoly relating to the use of the design.

It is not fatal to a trademark registration that consumers mayuse other means than the mark for identifying the product with a sole source. However,there must be sufficient evidence to show that the trademark is recognized onits own. A trademark based on get-up cannot acquire its distinctiveness byvirtue of its use in combination with a distinctive wordmark.

Comment

Therehave been a number of Canadian cases involving the shape of pharmaceuticalpills or pharmaceutical dispensers which have denied trademark protection toapplicants for similar reasons.

John McKeown

Goldman SloanNash & Haber LLP

480University Avenue, Suite 1600

Toronto,Ontario M5G 1V2

DirectLine: (416) 597-3371

Fax:(416) 597-3370

Email: mckeown@gsnh.com

These comments are of a general nature and not intended to provide legaladvice as individual situations will differ and should be discussed with alawyer.