KitKat applied to register the shape of its product as a mark but was refused on account of the ‘nature of the product’ and a ‘technical result’. According to the officer who processed the mark registration application, the three distinctive features are: firstly, the rectangular slab shape, secondly, the presence, location and depth of the lengthwise grooves, and, thirdly, the number of such grooves which, together with the width of the bar, determined the number of “fingers”.

According to the officer, the first characteristic arises from the nature of the product, and cannot therefore be registered, except for “cakes” and “pastries”, for which the shape of the mark differs substantially from the standards in the particular sector. Because the other two characteristics are necessary in order to achieve a technical result, the officer denied the application for registration.

Nestlé argued that the particular mark does not consist exclusively of the shape determined by the nature of the product or the shape that is necessary to achieve a technical result.

The application for KitKat’s shape mark was filed in relation to the following products: chocolate; chocolate confectionery; chocolate products; confectionery; chocolate-based preparations; bakery goods; pastries; biscuits; biscuits having a chocolate coating; chocolate-coated wafer biscuits; cakes; cookies; wafers. The mark is virtually always used in combination with the product’s packaging.

Nestlé appealed the denial with the European Court of Justice. In the mark registration phase it argued that its mark has become assimilated, that is to say has acquired distinctiveness among the public on account of use of the mark. Who doesn’t recognise the KitKat shape?

What was the European Court’s verdict?
According to existing case law, on account of the public interest, exclusionary practice applies for the registration of shape marks if these could result in the trademark right giving the trademark holder a monopoly on technical solutions or the usage features of a product, which the user may be looking for in the products from competitors. After all, the Court said, a trademark right in principle gives perpetual protection, without any time limit.

The Court also answered the question of when exactly a shape mark can be refused, if it must be assumed that multiple exclusionary practices apply, namely the nature of the product and the technical result. According to the Court, a shape mark can already be refused if at least one of the grounds for refusal from article 3 (1) (e) of Trademark Directive 2008/95 fully applies. It is not relevant therefore whether the mark can be refused on the basis of various grounds for refusal, as long as one single ground for refusal applies in full.

In this case, what applies is the exception on grounds of which the registration of marks can be refused if this is based entirely on the shape of the product which is necessary in order to achieve a technical result. According to the Court, this must be interpreted such that it pertains to the way in which the particular product functions and not to the way in which it is produced. According to the Court, it is logical that the production method is not decisive in the context of assessing the functional essential characteristics of the shape of the product. Even if the particular technical result can be achieved using other shapes and therefore using other production processes, it can still be refused, the Court said.

KitKat’s argument that its mark has become assimilated was also addressed. The distinctiveness of a mark, which is one of the general conditions for being able to register a mark, may be intrinsic, the Court said, but can also be acquired. For that to be the case, ‘the essential condition is, therefore, that, as a result of that use, the mark for which registration is being sought can, for the classes of consumers involved, serve to identify the products involved as coming from a particular company.’ Acquiring this distinctiveness must be proven for this shape in and of itself, even if this shape has been used ‘as part of another registered mark, whether or not in combination therewith’, whereby reference is made to the packaging which also shows the shape. The party applying for registration of the mark must prove that the particular classes of consumer perceive the product itself as coming from a particular company. It seems that the packaging may not, therefore, be included.

This decision indicates that the Court still takes a very strict approach when it comes to shape marks. Assimilation of such marks is not possible if that type of mark consists exclusively of the nature of the product, or the shape of the product is necessary to achieve a technical result. Mark holders must therefore primarily seek protection in the naming of their products and the packaging of these products. This can also be protected by copyright or design right.

By Joost Becker