A chocolate bar as shape mark: KIT KAT

Not any shape can be registered as trademark. Hauck vs. Stokke concerned a shape which gives substantial value to the good or which results from the nature of the good. And from Lego we know: a shape which meets a technical function cannot be a trademark. The exclusions are interpreted in a broad sense and an excluded shape does not become a trademark by acquiring distinctive character. Yet the shape mark isn’t dead. Some shapes clearly distinguish from the ‘rest of the market’ and do not fall under an exception. A carton packaging having a distinctive shape can be a trademark for the savory snacks it contains. If the trademark and good do not coincide there is no obvious problem. Even if the shape does coincide with the product, the high threshold for acquiring distinctive character is sometimes crossed. In Nestlé vs. Cadbury (Kit Kat) the CJEU decided on acquiring distinctive character and the exclusion based on technical.

The bar is only sold with the trademark KIT KAT on the wrapper and in relief on each strip of the bar. Can the shape of the bar without the wrapper and bearing the trademark acquire distinctive character in that case? And is it necessary that the public will then actually go by this sign, a condition which was indeed made until recently in the UK? The Court sets the threshold low: to acquire distinctive character it suffices that the good or service is perceived as coming from a specific enterprise. The name of the enterprise or the trademark does not have to be mentioned. And no ‘reliance’ condition applies.

Because of the angle of inclination of the three longitudinal grooves the chocolate is poured efficiently in the shape and after solidification the bar easily detaches. However, this does not cause that the grooves meet a technical function: the exclusion only regards the way in which the good in question functions and not the way in which it is made. When the new Trademark Package will have come into effect it will no longer be required that a trademark is recorded visually. This offers new opportunities for non-traditional marks, for instance fragrance, taste and touch marks. The exclusions based on technical function, nature and substantial value will then apply to all types of trademarks.

Maarten Haak, trademark lawyer

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