As noted in much of the mainstream press on Wednesday - and we imagine in tea breaks across the country - the ECJ gave their long-awaited
decision on questions asked by the UK High Court as part of Nestle’s appeal re the refusal to register the
unpackaged shape of a four fingered Kit Kat chocolate bar as a UK trade mark. This case, whilst very fact specific, has raised some key questions for trade mark lawyers, most interestingly about how a brand owner evidences that an inherently unregistrable sign has, through use, actually acquired the necessary trade mark character to be registered. So the million dollar question is what, based on this guidance, do Nestle have to show for this particular sign to be registered (absent any other reasons to reject it)? We suggest that it is actually:
that a significant proportion of the relevant public recognise the unpackaged 4 bar shape as being a Kit Kat, produced by Nestle
rather than the much higher hurdle of…
that a significant proportion of the relevant public understand the unpackaged 4 bar shape to be a trade mark of Nestle, which acts as an indicator of trade origin, and which they rely upon this when making a purchase.
The ECJ has now remitted the case back to the Court for it to decide whether the hearing officer’s original decision was correct. Although Nestle cannot file new evidence, the existing survey evidence may support the recognition test. Moreover, any future trade mark application by them will give them a chance to file further evidence in support of this mark. This has proven to be a divisive decision amongst practitioners, but we at Stobbs welcome the ECJ’s clarification and comparably lower bar than that which could have been set. Food for thought indeed!
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