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Can a chocolate bar shape be registered as a trade mark?

Written by Lucio Morcillo Peñalver on 17 September 2015

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On 28 January 2011, Cadbury filed a notice of opposition to the application for registration, claiming that registration should be refused on the basis of the provisions of the Trade Marks Act 1994 which transpose Article 3(1)(b), Article 3(1)(e)(i) and (ii) and Article 3(3) of Directive 2008/95.

The examiner in the UK agreed. According to Section 3(1) of the Trade Marks Act 1994, trade marks which are devoid of any distinctive character are not to be registered unless, before the date of application for registration, they have in fact acquired a distinctive character as a result of the use made of them.  Under Section 3(2) of that act, a sign is not to be registered as a trade mark if it consists exclusively of the shape which results from the nature of the goods themselves or of the shape of goods which is necessary to obtain a technical result.

The matter went before the High Court who referred three questions for consideration namely 

(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 Directive 2008/95 ..., 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 Directive 2008/95 ...?

(3) Should Article 3(1)(e)(ii) of Directive 2008/95 ... 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?’

The Court held

On those grounds, the Court (First Chamber) hereby rules:

1. Article 3(1)(e) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains 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, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue.

2. Article 3(1)(e)(ii) of Directive 2008/95, under which registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured.

3. In order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3) of Directive 2008/95, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company.

So four fingers to Kit Kat!

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