31 May, 2017

KitKat Snapped - UK Court of Appeal Rejects KitKat Trademark

Having discussed the KitKat chocolate bar saga near ad nauseum, this writer was content that things might've just settled down and the matter finished its course through the courts. To my chagrin, this was not correct, and the fight over everyone's favorite four-fingered chocolate bar rages on. After a spell in the EU courts (discussed here and here), the matter moved on to ultimate determination in the UK courts (here), with the latest decision appealed to the Court of Appeal. Will Nestle be successful on their appeal after a slew of losses?

As a basic primer for the case, Societe Des Produits Nestle SA v Cadbury UK Ltd concerned the application to register the shape of the KitKat chocolate bar made by Nestle (TM 2552692), which comprised of a four-fingered bar with no markings on the surface (although commonly includes the KitKat logo on each finger). Cadbury opposed the application, and since the opposition proceedings the case has bounced between the UK and EU courts, having been decided on by the CJEU and applied by Justice Arnold in the High Court. The matter was then appealed to the Court of Appeal.

The Court's decision concerned acquired distinctiveness, which was extensively discussed in both the CJEU and the High Court, and in particular, whether the mark can have acquired distinctiveness in the absence or in the presence of an already registered trademark (i.e. the embossed KitKat logo on the fingers, but not the registration). Lord Justice Kitchin noted that, even if a three-dimensional shape is sold in conjunction with another registered trademark does not mean that the shape in itself will acquired distinctiveness, or, in other words "..[consumers] might simply regard the shape as a characteristic of products of that kind or they might find it brings to mind the product and brand name with which they have become familiar".

Lord Justice Kitchin then moved on to applying the test for acquired distinctiveness to the sign at hand, which looks at "...whether the applicant has proved that a significant proportion of 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 undertaking", i.e. the shape acts, by itself, as the badge of origin.

With bloodlust in his eyes, Conker devoured his KitKat
What remains important is the consumers' perception of the mark (seeing it and knowing where the product comes from) and reliance on the same when purchasing the product. As discussed above, Lord Justice Kitchin concluded that the main test to resolve the question above would be "...whether [a] person would rely upon the sign as denoting the origin of the goods or services if it were used on its own". This would have to be evidenced somehow, for example, through surveys. The difficulty is in showing, through evidence, the distinction of reliance on the other mark (e.g. the KitKat logo) or on the shape of the chocolate bar. Mere association of the latter with the former is not enough.

The Court didn't disagree with the initial hearing officer in their decision, as Nestle had failed to establish acquired distinctiveness, since there was no evidence that the shape of the product had featured in promotional and advertising material, that it has it never been sold in opaque packaging, or had been featured on the packaging itself (bar for a short time). Survey evidence was also inconclusive on the recognition and reliance on the shape as an indicator of a KitKat product specifically, even though identified by many by the brand.

Although the EU General Court (discussed more here) and CJEU (discussed here) decisions shed some doubts over the need for 'reliance' on the mark (allowing for it to be used in conjunction with other marks and still be distinctive), Lord Justice Kitchin rejected this argument quite straightforwardly. In his mind, the decisions simply reiterated the requirement above on perception and reliance by consumers, and while reliance is not a requirement under the CJEU decision (discussed more here), it still remains an important consideration.Reliance demonstrates that a non-distinctive mark has become distinctive in its own right.

The Court of Appeal therefore was satisfied that the mark had not acquired distinctiveness and dismissed the appeal.

The case is a big blow for Nestle, and it'll be interesting to see whether they appeal the decision further to the Supreme Court. With a CJEU decision and a strong affirmation of the same by the Court of Appeal, success on appeal would seem unlikely, and permission would probably not be granted; however, the brand and the chocolate bar itself is hugely valuable and is potentially worth fighting for. The decision also highlights the importance of reliance on a mark, even if it's not required by EU legislation. Companies should heed the need to use a shape to actively market their goods, should it be something they want to defend, and simply not assume that association with another brand will bring in distinctiveness.

Source: BBC

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