The KitKat shape trademark saga has been detailed on this blog in great detail, going back several years (e.g. here, here and here). The fight over the chocolate bar shape seems to have gone on forever, and this writer thought he would be old and grey before the matter ultimately concluded. After Advocate General Wathelet's opinion in April, the CJEU has finally taken the matter on, and the decision will decide the fate of the current KitKat shape registration.
While the facts of the case have been discussed extensively, it is still useful to recite the basics to anyone not familiar with the background. The case of Société des produits Nestlé v Mondelez UK Holdings & Services concerns the registration of the shape of the KitKat chocolate bar (EUTM 2632529), owned by Nestle. Cadbury challenged the registration, seeking to invalidate it, with the matter ending up with the CJEU 11 years later.
The case revolves around Article 52(2) of the CTM Regulation, which allows for the registration of marks that have acquired distinctiveness through the use of the mark in conjunction with the goods or services. The distinctive character of the mark has to exist in the entirety of the EU for it to avoid invalidation.
What underpinned the matter was whether evidence has to be proved for the entirety of the EU, and not just a select sample of countries. In the case of August Storck KG v OHIM, the CJEU saw that a mark can be registered under Article 7(3) (which has to be read in conjunction with Article 52 above) "…only if evidence is provided that it has acquired, in consequence of the use which has been made of it, distinctive character in the part of the [EU] in which it did not, ab initio, have such character". If no distinctiveness exists in relation to the mark from the very beginning, acquired distinctiveness would have to be shown in the EU.
When it comes to acquired distinctiveness, the Court emphasised that, for any mark devoid of inherent distinctiveness, "…evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must be capable of establishing such acquisition throughout the Member States of the European Union". Evidence therefore does not have to be produced for each individual Member State, but can be produced in a way that shows acquired distinctiveness due to proximity in geography, culture or linguistics, and therefore acquired via another Member State even in the absence of evidence for that particular Member State.
The assessment of whether the evidence produced is enough to give the mark acquired distinctiveness in the EU is a matter for the EUIPO or its appellate courts in any given case.
The CJEU agreed with the General Court's decision, which rejected the argument by Nestle that the evidence covered the entirety of the EU, or a substantial part of it, leading to sufficient coverage. The Court therefore rejected all of Nestle's appeals, and the mark was invalidated.
The decision is a huge culmination of years of litigation, but by no means is the end of the KitKat shape trademark. While evidence was lacking for the current registration with regards to Belgium, Ireland, Greece and Portugal, Nestle are still within their rights to apply for a new registration, producing evidence to cover any missing Member States. Due to the clear monetary value of the mark, it is clear that Nestle will pursue to register the shape one way or another; however, this might just be the beginnings of a reboot for this particular litigation series
Showing posts with label bar. Show all posts
Showing posts with label bar. Show all posts
06 April, 2016
A Gleeful End - TV Show 'Glee' Infringes Comedy Venue's Trademark
Whether you are old or young you cannot have escaped the phenomenon that was the TV show Glee, which reached its peak popularity some time just before the turn of the first decade in 2000. The show was a teen drama, encompassing musical elements on top of the usual teen drama fare (very much in the spirit of glee clubs in the days of yore). Even with its upbeat style, the show, or rather its name, has not existed in pure glee, but has faced a prolonged challenge in the UK over its name. With that said, would the show have its last song as "Glee", or were they able to defend their moniker?
The recent decision of Comic Enterprises Ltd v Twentieth Century Fox Film Corporation dealt with a series of comedy clubs in the UK called The Glee Club, existing in Cardiff and Birmingham, among other cities. The owners of the clubs, Comic Enterprises, registered the logos of the clubs as UK trademarks in 2001. The marks incorporated the club's name in a stylized fashion, including a spotlight in the background of the name with each constituent part of it being roughly of equal size. The TV show "Glee" (focussing on the antics of a alee club at a fictional US high school) ran between the years of 2009 and 2015, garnering huge success both in and off the TV format, prompting Comic Enterprises to take them to court for trademark infringement and passing off after the clubs' owner noticed the similarities between the two names.
What the Court of Appeal had to address was whether Fox infringed the registered trade mark under sections 10(2) and 10(3) of the Trade Marks Act 1994, and whether they were guilty of passing off.
Under both sections 10(2) and 10(3), infringement is assessed on the basis of six factors: "(i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor; (iv) it must be of a sign which is identical with or similar to the trade mark; (v) it must be in relation to goods or services which are identical with or similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion". The first four factors were not disputed, as the show was indeed shown in the relevant territory (the UK); the mark was used in the course of trade (a commercial TV show); there was no consent over its use by Comic Enterprises; and the mark was identical with or similar to the registered mark (the Glee Club/Glee).
The final two factors look at whether the use of the mark was for similar or identical goods or services (i.e. is a club the same as a TV show in terms of use), and whether, as a result, there would be a likelihood of confusion between the goods and services. This is a matter of assessing, among other factors, "...their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary". Equally, the two marks have to be compared through the perspective of the average consumer. Without similarity there cannot be infringement, so this is very important.
A big point of contention in the assessment of similarity was the trial judge's 'wrong way round' determination through evidence, or in other words, that the registered mark evoked a connection with the TV show, rather than the other way around (the more typical test for similarity). After discussing all submitted evidence anew, Lord Justice Kitchin determined that the evidence did indeed create a likelihood of confusion, however acknowledging some of it having little probative value. This is an interesting point, as the case clearly accepts 'wrong way round' evidence, and as such this could be used in other cases to prove a likelihood of confusion.
Finally, Lord Justice Kitchin turned to the matter of infringement, due to substantial errors made by the trial judge in their initial judgment. He ultimately found that there was indeed infringement under section 10. The two marks were deemed to be similar, even with the fact that the word "glee" was a common word. Additionally, the goods and services offered by the two parties were sufficiently similar, although the similarity of a TV show and a club were challenged by the defendant. Lord Justice Kitchin specifically mentioned the context of the marks' use, and even though he accepted that the connection between the two was loose on the face of it, there still was a possible connection, especially with a world tour planned for the TV show incorporating a live element to the mark's use. He ultimately found a likelihood of confusion between the two marks. A potential changing of economic behavior by consumers based on this confusion would also cause detriment to the claimant, especially in the light of a need to change their marketing to further distinguish themselves from the TV show.
He also agreed with the trial judge and dismissed the passing off claim made by the claimant, as a likelihood of confusion is to be distinguished from misrepresentation, which is crucial for a passing off claim. As the defendant's use of the name was not to pretend the TV show was associated with the comedy clubs (although the mark was confusingly similar) and thus was not a misrepresentation.
The case is an interesting one, and shows that 'wrong way round' confusion is a legitimate argument, even though one could consider it unorthodox under the letter of the law. Nevertheless, this writer agreed with Lord Justice Kitchin, and wonders whether the case will see a further appeal, especially because of an outstanding issue on the compatibility of section 41 under EU law (specifically Directive 2008/95/EC). This remains to be seen, but it seems that the show will have to be rebranded in the UK, even after its end some time ago.
Source: IPKat
The recent decision of Comic Enterprises Ltd v Twentieth Century Fox Film Corporation dealt with a series of comedy clubs in the UK called The Glee Club, existing in Cardiff and Birmingham, among other cities. The owners of the clubs, Comic Enterprises, registered the logos of the clubs as UK trademarks in 2001. The marks incorporated the club's name in a stylized fashion, including a spotlight in the background of the name with each constituent part of it being roughly of equal size. The TV show "Glee" (focussing on the antics of a alee club at a fictional US high school) ran between the years of 2009 and 2015, garnering huge success both in and off the TV format, prompting Comic Enterprises to take them to court for trademark infringement and passing off after the clubs' owner noticed the similarities between the two names.
What the Court of Appeal had to address was whether Fox infringed the registered trade mark under sections 10(2) and 10(3) of the Trade Marks Act 1994, and whether they were guilty of passing off.
Under both sections 10(2) and 10(3), infringement is assessed on the basis of six factors: "(i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor; (iv) it must be of a sign which is identical with or similar to the trade mark; (v) it must be in relation to goods or services which are identical with or similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion". The first four factors were not disputed, as the show was indeed shown in the relevant territory (the UK); the mark was used in the course of trade (a commercial TV show); there was no consent over its use by Comic Enterprises; and the mark was identical with or similar to the registered mark (the Glee Club/Glee).
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| No room for song and dance after Lord Justice Kitchin's judgment |
A big point of contention in the assessment of similarity was the trial judge's 'wrong way round' determination through evidence, or in other words, that the registered mark evoked a connection with the TV show, rather than the other way around (the more typical test for similarity). After discussing all submitted evidence anew, Lord Justice Kitchin determined that the evidence did indeed create a likelihood of confusion, however acknowledging some of it having little probative value. This is an interesting point, as the case clearly accepts 'wrong way round' evidence, and as such this could be used in other cases to prove a likelihood of confusion.
Finally, Lord Justice Kitchin turned to the matter of infringement, due to substantial errors made by the trial judge in their initial judgment. He ultimately found that there was indeed infringement under section 10. The two marks were deemed to be similar, even with the fact that the word "glee" was a common word. Additionally, the goods and services offered by the two parties were sufficiently similar, although the similarity of a TV show and a club were challenged by the defendant. Lord Justice Kitchin specifically mentioned the context of the marks' use, and even though he accepted that the connection between the two was loose on the face of it, there still was a possible connection, especially with a world tour planned for the TV show incorporating a live element to the mark's use. He ultimately found a likelihood of confusion between the two marks. A potential changing of economic behavior by consumers based on this confusion would also cause detriment to the claimant, especially in the light of a need to change their marketing to further distinguish themselves from the TV show.
He also agreed with the trial judge and dismissed the passing off claim made by the claimant, as a likelihood of confusion is to be distinguished from misrepresentation, which is crucial for a passing off claim. As the defendant's use of the name was not to pretend the TV show was associated with the comedy clubs (although the mark was confusingly similar) and thus was not a misrepresentation.
The case is an interesting one, and shows that 'wrong way round' confusion is a legitimate argument, even though one could consider it unorthodox under the letter of the law. Nevertheless, this writer agreed with Lord Justice Kitchin, and wonders whether the case will see a further appeal, especially because of an outstanding issue on the compatibility of section 41 under EU law (specifically Directive 2008/95/EC). This remains to be seen, but it seems that the show will have to be rebranded in the UK, even after its end some time ago.
Source: IPKat
11 November, 2015
Taking a Break - Kit Kat Decision Issued by ECJ
For all lovers of confectionery goods the name Kit Kat will undoubtedly be a familiar one, even without its highly memorably slogan. The iconic British chocolate bar has been around since the 1930s, and above all else what many will remember is its shape, comprising of five individual chocolate covered wafer 'fingers' connected at the base by a lawyer of chocolate. As such shapes can be protected through intellectual property law, but whether Kit Kat's design is truly distinctive enough to be protected as a trade mark, has been a contested question here in the UK for several years, ultimately being referred to the European Court of Justice by Justice Arnold nearly two years ago in Société Des Produits Nestlé SA v Cadbury UK Ltd [UK High Court of Chancery]. As a result the ECJ handed down its judgment in September this year.
The case of Société Des Produits Nestlé SA v Cadbury UK Ltd [European Court of Justice] dealt with an application for a trademark by Nestle for a three-dimensional representation of the Kit Kat bar, omitting the embossed words "Kit Kat" from the top of the chocolate bar's individual fingers. After the application's publication Cadbury submitted an opposition against its registration, arguing a lack of distinctive character, initially having the mark rejected by the UK Intellectual Property Office, ending in Nestle's appeal to the UK High Court.
Justice Arnold submitted three questions to the ECJ prior to his later judgment applying the Court's consideration.
The ECJ started by answering the second question posed by Justice Arnold. What was asked was seen as "...whether Article 3(1)(e) of Directive 2008/95... 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".
After a very brief consideration of precedent, especially relating to the prevention of any registration monopolizing a technical solution or functional characteristics, the Court determined that "...Article 3(1)(e)... 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". What remains key is the refusal of registration based on a single ground under Article 3(1)(e), even if, predominantly, the shape does not fall under all of the grounds. Public interest in the strict enforcement of the grounds of refusal was important in the Court's view, as a contrary position would allow for the monopolization of the very subject matter the Article seeks to disallow. What is uncertain is how this applies to a shape as whole and its respective components. Would a shape be negated as a whole if it contains a part that would fall under the grounds (negating the registrability of the whole design)? Arguably, this would be the case, but the decision leaves this unclear.
The Court then moved on to the third question, which it saw as asking "...whether Article 3(1)(e)(ii)... 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 or whether it also applies to the manner in which they are manufactured". As the wording of the sub-section does not discuss the manner of manufacture for the goods, the Court had to decide whether it implicitly does so. They quickly decided against this, setting out that "...that Article 3(1)(e)(ii)... 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". The inclusion of manufacturing methods, in this writer's mind, would encroach onto the territory of patents, and how a product is made does not designate its origin; the primary function of trademarks.
Finally, the Court proceeded to question one, which was set out as "...whether an applicant to register 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)... must prove that the relevant class of persons perceive the goods or services designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular company, or whether it is sufficient for that applicant to prove that a significant proportion of the relevant class of persons recognise that mark and associate it with the applicant’s goods".
Again, considering precedent in brevity, the Court saw that "...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)... 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". What the question therefore requires is that the proprietor of the mark has to prove that the relevant class of people perceive their mark, in this case "Kit Kat", to only originate from them and not other proprietors selling similar goods, even if the goods contain other registered trademarks (or a design, in this case). The onus would be on Nestle to show that the shape of the chocolate bar, regardless of the inclusion of the words "Kit Kat", would be indicative of the source of the bar by itself (i.e. a distinctive feature). The Court did omit Justice Arnold's question on reliance on the mark, focusing on their 'perception' and 'recognition' of the mark. Arguably reliance does not necessarily follow the two, but this writer thinks, in the Court's mind, their intention is to include reliance through perception, as seeing and knowing a mark in conjunction with another would still carry some weight in the purchase decision, effectively creating a level of 'reliance'.
The case has since been referred back to the High Court for ultimate decision, but this writer thinks, based on earlier considerations, that the shape of the Kit Kat bar might not be enough to distinguish it from other similar ones to allow for the registration of the mark. The ECJ's answers to the questions seemed unsurprising, however leaving many things uncertain or somewhat unanswered, but give more nuanced guidance, which is never too abundant in today's legal sphere. How the case will be applied in the future is uncertain, but hopefully this application will manifest even more clarity as a result.
Source: IPKat
The case of Société Des Produits Nestlé SA v Cadbury UK Ltd [European Court of Justice] dealt with an application for a trademark by Nestle for a three-dimensional representation of the Kit Kat bar, omitting the embossed words "Kit Kat" from the top of the chocolate bar's individual fingers. After the application's publication Cadbury submitted an opposition against its registration, arguing a lack of distinctive character, initially having the mark rejected by the UK Intellectual Property Office, ending in Nestle's appeal to the UK High Court.
Justice Arnold submitted three questions to the ECJ prior to his later judgment applying the Court's consideration.
The ECJ started by answering the second question posed by Justice Arnold. What was asked was seen as "...whether Article 3(1)(e) of Directive 2008/95... 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".
After a very brief consideration of precedent, especially relating to the prevention of any registration monopolizing a technical solution or functional characteristics, the Court determined that "...Article 3(1)(e)... 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". What remains key is the refusal of registration based on a single ground under Article 3(1)(e), even if, predominantly, the shape does not fall under all of the grounds. Public interest in the strict enforcement of the grounds of refusal was important in the Court's view, as a contrary position would allow for the monopolization of the very subject matter the Article seeks to disallow. What is uncertain is how this applies to a shape as whole and its respective components. Would a shape be negated as a whole if it contains a part that would fall under the grounds (negating the registrability of the whole design)? Arguably, this would be the case, but the decision leaves this unclear.
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Finally, the Court proceeded to question one, which was set out as "...whether an applicant to register 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)... must prove that the relevant class of persons perceive the goods or services designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular company, or whether it is sufficient for that applicant to prove that a significant proportion of the relevant class of persons recognise that mark and associate it with the applicant’s goods".
Again, considering precedent in brevity, the Court saw that "...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)... 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". What the question therefore requires is that the proprietor of the mark has to prove that the relevant class of people perceive their mark, in this case "Kit Kat", to only originate from them and not other proprietors selling similar goods, even if the goods contain other registered trademarks (or a design, in this case). The onus would be on Nestle to show that the shape of the chocolate bar, regardless of the inclusion of the words "Kit Kat", would be indicative of the source of the bar by itself (i.e. a distinctive feature). The Court did omit Justice Arnold's question on reliance on the mark, focusing on their 'perception' and 'recognition' of the mark. Arguably reliance does not necessarily follow the two, but this writer thinks, in the Court's mind, their intention is to include reliance through perception, as seeing and knowing a mark in conjunction with another would still carry some weight in the purchase decision, effectively creating a level of 'reliance'.
The case has since been referred back to the High Court for ultimate decision, but this writer thinks, based on earlier considerations, that the shape of the Kit Kat bar might not be enough to distinguish it from other similar ones to allow for the registration of the mark. The ECJ's answers to the questions seemed unsurprising, however leaving many things uncertain or somewhat unanswered, but give more nuanced guidance, which is never too abundant in today's legal sphere. How the case will be applied in the future is uncertain, but hopefully this application will manifest even more clarity as a result.
Source: IPKat
14 April, 2013
Raising the Bar
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| Legislation not endorsed by the TV show |
- Raising the quality of granted patents by implementing changes to the key tests for patentability and more closely aligning these with international standards.
- Reducing delays in the resolution of opposition proceedings concerning patents and trade marks.
- Implementing changes to the regulation of patent and trade marks attorney professions and the increasing the ways in which they can operate.
- Implementing procedures for dealing with imports suspected of infringing IP rights and making it harder for importers of counterfeit goods to evade an IP right holder.
- Providing access to a simplified and more effective IP system.The Act seems to amend some practical aspects, as well as attempt to speed up some of the processes, which no doubt are all welcome changes to all patent practitioners. However, as I lack the direct knowledge of patents in practice, whether these changes will actually impact the field will be left for someone to clarify for me.
A more comprehensive guide to the IP Reforms is provided for all to read, and gives more insight into the changes brought in via the Act.
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