IN THE MATTER of the Trade Marks Act 1994 AND IN THE MATTER of Trade Mark Application Numbers 2000661 and 2000662 AND IN THE MATTER of oppositions thereto numbers 45851 and 46305 Société de Produits Nestlé SA v Appellant/Opponent [2002] EWHC 2709 (Ch)

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
IN THE MATTER of the Trade Marks Act 1994
AND IN THE MATTER of Trade Mark Application Numbers 2000661 and 2000662
AND IN THE MATTER of oppositions thereto numbers 45851 and 46305
[2002] EWHC 2709 (Ch)Case No Case No: CH 2001 APP/0731 Cross- Appeal CH 2002 APP/0049Venue Royal Courts of Justice, Strand, London, WC2A 2LL
Between
IN THE MATTER of the Trade Marks Act 1994 AND IN THE MATTER of Trade Mark Application Numbers 2000661 and 2000662 AND IN THE MATTER of oppositions thereto numbers 45851 and 46305 Société de Produits Nestlé SAAppellant/OpponentUnilever plcRespondent/Applicant
Before
Mr Justice JacobColin Birss (instructed by Bird & Bird) for the Appellant/OpponentRichard Miller QC (instructed by DLA) for the Respondent/ApplicantHearing dates : 2-3 December 2002Date 18 December 2002
[1]Mr Justice Jacob: As long ago as 31 st October 1994 Unilever applied to register two trade marks for "ice cream dessert products" under Nos. 2,000,661 and 2,000,662. In each case they claim that "the mark consists of a 3-dimensional shape." Pictures of the shape are as follows: 2,000,661 (the "white mark"): [ Diagram or picture not reproduced in HTML version - see original .rtf file to view diagram or picture ] This is a rather poor picture (though it is the one on the Patent Office website). Actually the product has a white "wavy" structure on top - as can be imagined from the rather better picture of the other mark. Note what a Dutch court called the "Franz Hals frill" running along the side. No. 2,000,662 (the "dark mark"): [ Diagram or picture not reproduced in HTML version - see original .rtf file to view diagram or picture ] It may be noted that the dark mark is merely the same as the white mark but with dark chocolate on top. The layers are different in number and arrangement too. The Legal Provisions[2]Pursuant to Art. 2 of the Trade Marks Directive 89/104:
"A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other under undertakings."
[3]Under Art 3(1) of the Directive "the following shall not be registered or if registered shall be liable to be declared invalid:(a) signs which cannot constitute a trade mark;(b) trade marks which are devoid of any distinctive character;(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; (e) signs which consist exclusively of: - the shape which results from the nature of the goods themselves, or - the shape of goods which is necessary to obtain a technical result, or - the shape which gives substantial value to the goods."[4]There is a qualification to this contained in Art 3(3):
"A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character."
The case turns on the UK statutory equivalents of these provisions, which I need not set out separately. Proceedings in the Registry[5]Unilever supported their applications with evidence of use. The Registry thought that was enough, accepted the applications for registration and duly advertised them. Nestlé opposed. After evidence had been filed and a hearing conducted, the Registrar's hearing officer rejected the opposition to the dark mark but upheld it in relation to the white mark. Both sides now appeal.[6]Nestlé's grounds of opposition were based on the UK provisions corresponding to: Art. 3(1)(e) first head - "nature of the goods themselves"; Art. 3(1)(a) "cannot constitute a trade mark"; Art. 3(1)(b) "devoid of any distinctive character"; Art. 3(2)(d) "application made in bad faith". Art.

(d) - "bad faith"

[7]I need say little about this allegation - it was based on a suggestion that somehow a patent monopoly was being extended. That is miles from bad faith. An allegation of bad faith should only be made when dishonesty or something approaching it (such as conduct falling short of acceptable commercial behaviour) can properly be alleged with full particulars. It is a serious allegation, not one to be thrown in the pot along with other, more conventional points (see Royal Ensign TM, Appointed Person Simon Thorley QC, 21 st July 2001 and Gromax v Don & Low [1999] RPC 367). Not surprisingly it failed in this case. Originally there was an appeal in respect of the point. Nestlé also served a Respondent's Notice raising "bad faith" in Unilever's white mark appeal. But "bad faith" was abandoned in both appeals just prior to the December hearing. The hearing officer's appropriately terse rejection of the point was right.

(e) - third head, "substantial value" not pleaded or in issue

[8]What is conspicuous by its omission from the grounds of opposition is the third head of Art.3(1)(e) - "Signs which consist exclusively of the shape which gives substantial value to the goods." I cannot imagine why this was not taken. For the appearance of Viennetta is obviously intended to attract customers as compared with other designs. It is clearly arguable, probably strongly arguable, that the appearance adds value to the product and may serve only that purpose being essentially an aesthetic creation. Unilever indeed registered the shape as a design, a point not actually even put in evidence before the Registry even though the Viennetta box gives the registered design number. Nestlé recognise it was a blunder not to plead this ground. In February, when these appeals first came before me, they applied to amend their grounds of opposition to bring this one in. But that would have meant giving Unilever an opportunity to put in evidence - and in effect probably remitting the matter to the Office. That I was not prepared to do, particularly since Mr Miller indicated on behalf of Unilever that Nestlé would be free to launch a subsequent attack on the marks based on this ground if their present attacks failed.[9]I refused a renewed application to add this ground when the case came back having been adjourned from February when the ECJ's judgment in Philips was shortly expected. The reason for the adjournment was that it was agreed that the decision might assist in this case. In the event it is not of complete assistance. For that reason I have decided that I should refer some questions to the Court. The parties were agreed that I should express my provisional view since that might be of assistance. Accordingly I do so. Art. 3(1)(e) first head - shape which results from the nature of the goods themselves?[10]Mr Birss, for Nestlé, puts his case this way: Viennetta has always been sold and advertised with prominent use of the word trade marks Walls and Viennetta. Those are the trade marks. The product is the three-dimensional ice-cream with chocolate got up in a fancy way. The "nature of the goods" is the shape - it is what makes this ice-cream product different from others and is its "nature."[11]Mr Birss accepts that English case law is against him. Aldous LJ in Philips [1999] RPC 809 at p.820 said this:
"They [the defendants] submitted that the words "the goods" should be construed as meaning the goods for which the trade mark was intended to be used and in respect of which it was said to have acquired a distinctive character; in this case the head of a three headed rotary shaver. That being so, the shape exclusively resulted from the nature of the goods. In my judgment the words "the goods" refer to the goods in respect of which the trade mark is registered. Those are the goods which it must be capable of distinguishing and in respect of which the proprietor obtains, on registration, the exclusive right to use the trade mark. The words are used to refer to any of the goods falling within the class for which the trade mark is registered. For example, registration of a picture of a banana in respect of "fruit" would be just as objectionable as registration of that word would be in respect of "bananas"
. The purpose of the subsection is to prevent traders monopolising shapes of particular goods and that cannot be defeated by the skill of the applicant when selecting the class of goods for which registration is sought. Subsection 2(a) has to be construed in the context of subsections (b) and (c). It is intended to exclude from registration basic shapes that should be available for use by the public at large. It is difficult to envisage such shapes, except those that are produced in nature such as bananas. But I believe that the judge was right to conclude that the trade mark was not prevented from registration by this subsection. The trade mark is registered in respect of "electric shavers". There is no one shape, let alone that depicted in the trade mark, which results from the nature of such shavers."[12]Although I was upheld on this point, I had put it slightly differently. I said:
"This provision, considered purely academically, poses problems. What are the "goods themselves"? A shape will define part or the whole appearance of a given object. If that object is regarded as the goods then the shape will always result from the nature of the goods. Take this case. If you regard "the goods" as "rotary shavers having three equilateral heads and a face plate" then the shape results from the nature of the goods. If on the other hand you regard "the goods" as just rotary shavers, or more generally electric shavers or even more generally as shavers, electric or otherwise, then the shape does not result from the nature of the goods. How then does one define what "the goods" are? It was suggested at one point that one should take the specification of goods for which the mark is registered. But that specification will be partly adventitious. Philips' registration is for "electric shavers"
. It could have been wider, for "mechanical shavers" and possibly even for "shavers", for instance. So I do not think one can simply go by the specification of goods. I think the correct answer is partly one of degree. The nature of the goods is not an academic question. One is here considering the goods as articles of commerce, for this is a provision about trade marks. I think one must ask what the goods are as a practical business matter. The answer depends on how they are viewed in practice as articles of commerce. The answer here, I think, is as "electric shavers". By and large such shavers are seen as a single type of commercial article. True it is there are subsets (the various sorts of vibra and the two and three headed rotaries of Philips) but as a generality they are one sort of commercial article."[13]The difference is that the Court of Appeal said it turned on the specification of goods, whereas I thought it turned on the kind of article regarded as an article of commerce. I thought the specification test was adventitious because it depended only on how it was formulated by the trade mark owner.[14]Advocate-General Colomer in Philips summarised the three heads of exclusion in Art.3(3) as "natural, functional or ornamental" shapes ([2001] RPC 745 at p.751). He has recently reiterated that view in Linde Cases C-53/01 to C55/01, 24 th October 2002 at para. 29. That suggests that head 1 is limited to naturally occurring shapes rather than artificially created shapes such as a Viennetta.[15]If any of these three formulations are right, then Nestlé will fail on this point. And it is my provisional view that they should. However I cannot say their argument is beyond all hope and accordingly intend to refer a question based on Art.3(1)(e) first head.[16]The point relates to both dark and white marks. It may be noted that it is inherent in the argument that the "nature of the goods" is different in each case - which seems unlikely. Art. 3(1)(a) and (b), and (3) "capable of distinguishing," "devoid of distinctive character" "acquired distinctive character"[17]This is the main point, essentially arising on the dark mark.[18]Unilever's evidence purports to show that the dark mark is not "devoid of any distinctive character" because the use they had made of it proved it had "acquired a distinctive character." They do not accept they actually needed Art.3(3), i.e. that they needed to prove acquisition of a distinctive character by use. On the other hand Mr Miller QC for Unilever was not prepared to argue that the mark without evidence of use and distinctiveness could be registered. He evidently felt it impossible or extremely difficult so to contend. But he did not formally concede that he needed such evidence. This was because, he said, it might affect the position in some other countries. If that is so, then it would seem that in some Member States Trade Mark Registries are accepting unusual shapes without any proof that they have become recognised or served as a trade mark. I regard that as undesirable in principle - it would mean that many new designs could also be registered as a trade mark with a consequential perpetual monopoly. Trade mark registries would in effect be acting as design registries if they accept novel or attractive shapes merely on grounds of novelty or attractiveness. That is not what was intended by the Directive. Laddie J dealt with the point this way in Yakult (Bottle Shape) [2001] IP&T 1202 at para.8:
"The fact that a particular design is eye-catching because it is unusual or decorative is not enough by itself. At all times the Registry has to ask whether the design is distinctive as a badge of origin. The exercise to be undertaken was described by the ECJ in Lloyd v Klijsen Handel Case -C-342/97 [1999] ECR I-3819 , [1999] IP & T 11, [2000] FSR 77 : "in determining the distinctive character of a mark …. the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings." [9] In my view the same point was made even more succinctly by Lloyd J in Dualit (Toaster Shapes) [1999] RPC 890 at 897, a case concerning an application to register the shape of an electric toaster as a trade mark: "…. does [the mark] have a meaning denoting the origin of the goods?" [10] Where inherent distinctiveness is concerned, the Registry has to find that the mark performs the function of identifying origin even before the public is educated that it is used for that purpose. Where invented, non-descriptive word marks are concerned, it may be easy to come to such a finding. But where a container is in issue it may well be much more difficult. As Mr Thorley rightly conceded, the fact that a container is unusual or attractive does not, per se, mean that it will be taken by the public as an indication of origin. The relevant question is not whether the container would be recognised on being seen a second time, that is to say whether it is of memorable appearance, but whether by itself its appearance would convey trade mark significance to the average customer. For the purposes of this appeal, I am prepared to accept that the bottle shape which is the subject of these applications is both new and visually distinctive, meaning that it would be recognised as different to other bottles on the market. That does not mean it is inherently distinctive in the trade mark sense."
I can summarise the evidence, which was not really in dispute. There were two broad aspects, evidence of use and its manner, and an opinion poll.[19]Unilever have always used the very well-known name "Walls" for their ice-cream products. In 1982 they launched nationwide an ice-cream product under the trade mark Viennetta. It is, in the terminology of the trade, a "pre-formed ice cream dessert". The dark mark is a picture of it. It was an instant success. By 1985 sales were running at £16m and rising. By the date of the applications Unilever had sold nearly 170 million packs of Viennetta with a value of nearly £250 million.[20]The dark mark was the main and original form of Viennetta, but variants with different flavours were introduced over time: mint and strawberry in 1987, chocolate in 1989, cappuccino in 1990, praline in 1991 and white chocolate in 1993. Some of these variants differed in appearance from the dark mark as shown above in that the ice-cream was white, even in a black and white picture version. The white chocolate variant is the subject of the white mark application. It differs from all the others in that the top coating is of white chocolate rather than dark chocolate - and in the detail of the waves and layering.[21]Unilever also spent a great deal on advertising, both on television, in the press and on hoardings. That advertising prominently used the word Viennetta (nearly always with "Walls"). Pictures of the product were prominent - emphasis being placed on its appearance as a whole and when sliced. Particular emphasis was placed in the television advertisements on the structure of the product. These are some quotations from them:
"Pure white ice-cream tantalizingly interleaved with crisp dark chocolatey layers" "
The one slice of Viennetta with its irresistible crisp dark layers and sinfully rich ice cream never seems quite enough" "When you see the soft waves of Viennetta and you want to sink into that soft ice cream - to discover the crisp layers" "So many waves of soft ice cream between crispy layers of chocolate."[22]With this massive use, it is not surprising that the shape of the product has achieved a significant degree of public recognition (I deliberately refrain from using the word distinctiveness - it begs the question). The opinion poll was designed to demonstrate this. Opinion polls have to be scrutinised with considerable care. That care starts with the form of the questions. All too often they lead the respondent to a desired answer or simply invite guesses. Next there is the structure of the poll - how are interviewees selected? Are there enough? In the latter connection it is sometimes forgotten that one is looking for a broad picture rather than the sort of precision which large numbers can give. Then there is how the poll was conducted - it is all too easy for the interviewers to be sloppy. After that there is the analysis of the poll - again errors can and often are made. Finally there must be an opportunity for anyone challenging the poll to have access to the raw data so that all these matters can be checked.[23]In this case Unilever properly turned over all the paperwork of the poll to Nestlé. They also got over 50 of the "pollees" to confirm their answers by statutory declarations sworn in these proceedings. It was by examining the questionnaire sheets that Mr Birss was able to point to the fact of a 15% misattribution (see below) - a point not mentioned in Unilever's evidence.[24]The questions for the poll in this case were as follows:
"1. Do you eat ice cream?"
If the answer was no, the interview was terminated. Next the interviewer asked:
"Here you have a selection of ice cream products"
The interviewee was shown a board with 4 products on it. No. 3 was Viennetta (dark mark); the other three were other ice-cream dessert products on the market. All of them have a generally "gateau" type appearance, though are clearly different when compared side by side. They were said to be the products on the market most similar to Viennetta "2. Do you recognise any, if so can you identify them?" The interviewer then had to fill in a box giving the names of products one to four as given by the interviewee. 3. "You have correctly identified 3 as Viennetta. Why did you say that?" 4. "How would you describe the appearance of Viennetta (perhaps to a blind person)?" I have no idea why this was asked. Mr Miller could not tell me. He could not even answer the question himself, accepting it was as hard as asking someone to describe an elephant to a blind person.[25]I turn back to question 2. Plainly it invited a degree of guesswork - people who were unsure might have nonetheless tried to answer. I suppose that the first part of question 3 acknowledges that there will be some guessers - for why else give them confirmation that they have got the right answer? Nonetheless the question is not so bad that the answers can be dismissed on that ground alone. It was upon those answers that Mr Miller founded his case.[26]Stripped of minor criticisms (e.g. size of sample, and at least one failure by an interviewer to obey the "do not prompt" instruction), the figures which emerge are that 55/82 persons said No. 3 was Viennetta. But no less than 12 out of 82 said that one or more of the other products were Viennetta. Of those 12, 8 also said number 3 was Viennetta.[27]Of those who said Viennetta for question 2 (and so were asked question 3) all or nearly all knew that Viennetta was made by Walls. Question 3 of course has a fault - by confirming the correctness of the answer first, guessers were encouraged to press on. But in the end I do not think this matters.[28]So what this all amounts to is this: there was a high degree of recognition of the product as a Walls product (about 67% of ice-cream eaters). Also, however, there was a significant proportion (15%) of people who thought that one or more other ice-cream products were Viennetta. Imperfect recollection clearly has a significant effect. This is important. For if the shape mark had been registered and this was an infringement action, it would seem that these other products would or might infringe. It must never be forgotten that registration of a mark gives the owner rights which extend beyond the mark as actually registered to a sign where, because of its similarity to the trade mark, there exists a likelihood of confusion on the part of the public (Art.5(1)(b)).[29]Conscious of the danger that might pose to registration, Mr Miller on behalf of Unilever, said his clients would not sue any of the makers of any of the other products. I accept that, although I note that in Holland Unilever did sue in respect of a product which was rather different in appearance and did not have exactly the same Franz Hals frill. (There were other factors in that case, however, particularly the similar get-up on the box and the use of a name, Valencia, rather obviously intended at least to put one in mind of Viennetta). That Unilever would not sue the makers of these particular three products is beside the point. In the interests of free competition one must consider newcomers in the mock-gateau ice-cream market. That includes those who would not dare to venture into the market with a product having only a general resemblance to Viennetta if the current marks are registered. People do not readily risk a fight with Unilever. What degree of difference is enough to avoid infringement is an important question at the registration stage.[30]The hearing officer asserted that the protection given if these marks were registered "must be somewhat narrow". He thought that the survey showed no evidence of confusion. I think that a 15% misattribution is rather more than that. After all for trade mark infringement you do not have to fool all the people all of the time. It is enough if a significant proportion of the public, exercising reasonable care, is confused.[31]Putting the other products on one side for the moment, there can be no doubt that the product appearance has achieved considerable recognition on its own as denoting Walls' Viennetta - the product of a particular manufacturer. Is that enough to give it a "distinctive character" within the meaning of Art.3(3)? For what has not been proved is that any member of the public would rely upon the appearance alone to identify the goods. They recognise it but do not treat it as a trade mark.[32]There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone. Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no-one is deceived or misled.[33]I do not think that is what the European Trade Mark system is for. It is a system about trade marks, badges of trade origin. For that reason I think that in the case of marks consisting of product shapes it is not enough to prove the public recognises them as the product of a particular manufacturer. It must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a "distinctive character" for the purposes of trade mark law.[34]I am of course well aware that the ECJ has held that:
"Article 2 of the Directive makes no distinction between different categories of trade marks. The criteria for assessing the distinctive character of three-dimensional trade marks, such as that at issue in the main proceedings, are thus no different from those to be applied to other categories of trade mark."
Philips Case C-299/99 [2002] ETMR 955 at para. 48[35]Likewise the CFI said in Henkel (red and white detergent tablet) Case T-337/99, 19 th September 2001, at para. 45:
"Article 7(1)(b) of Regulation No 40/94 [the CTM Regulation equivalent of Art.3(1)(b)] does not distinguish between different categories of trade marks. The criteria for assessing the distinctive character of three-dimensional trade marks consisting of the shape of the product itself are therefore no different from those applicable to other categories of trade marks."
[36]But although the criteria are the same, the factual position concerning shape of goods marks is different. In the case of word marks and logos the public expects them to be trade marks – they are used on or in relation to goods and in relation to services for the very purpose of distinguishing the goods of one trader from another. But that is far from being self-evidently so in the case of marks consisting of the product shape itself. On the contrary the public is likely to take the word mark used with the goods as the trade mark and the appearance as no more than the goods themselves. Thus it is that, as the CFI went on to say in Henkel :
"Nevertheless, when those criteria are applied, account must be taken of the fact that the perception of the relevant section of the public is not necessarily the same in relation to a three-dimensional mark consisting of a shape and the colours of the product itself as it is in relation to a word mark, a figurative mark or a three-dimensional mark not consisting of the shape of the product. Whilst the public is used to recognising the latter marks instantly as signs identifying the product, this is not necessarily so where the sign is indistinguishable from the appearance of the product itself. The Board of Appeal rightly points out that, as regards the perception of the public concerned, the products for which trade-mark registration was sought in the present case, namely washing machine and dishwasher products in tablet form, are widely used consumer goods. The public concerned, in the case of these products, is all consumers. Therefore, in any assessment of the distinctive character of the mark for which registration is sought, account must be taken of the presumed expectations of an average consumer who is reasonably well informed and reasonably observant and circumspect (see, by analogy, Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657 , paragraphs 30 to 32)."
[37]The presumed expectation of a member of the public is that the shape of Viennetta is there to make it attractive to the eye and to indicate its virtue as a delicious ice-cream product. I see no material in the evidence which rebuts that presumed expectation. On the contrary the way the product has been advertised reinforces that expectation. The advertisements say, and very effectively say, "look at this attractive and delicious product and buy it for those attributes." They do not teach the public to regard the appearance on its own as saying "here is a Walls product" or "here is a product from a unique source."[38]Thus I think there is a real difference between mere product recognition and "distinctive character" in the case of three-dimensional signs. For the latter to qualify for registration they must be more than recognised, they must be taken and relied on as trade marks. That will require proof under Art.3(3).[39]I am also conscious that what I am saying means there is some overlap between the issue of distinctiveness and other heads of objection, particularly Art. 3(1) (e) - third head ("substantial value"). But that is inevitable. Where an appearance adds value then the public may want the product for that value, not because they rely upon the appearance as an identifier of trade origin. As one of the "pollees" said in her statutory declaration:
"I buy it because it looks nice."
[40]I think that what I have said is consistent with what the Court said in Philips in relation to question 3. The question was:
"Where a trader has been the only supplier of particular goods to the market, is extensive use of a sign, which consists of the shape (or part of the shape) of those goods and which does not include any capricious addition, sufficient to give the sign a distinctive character for the purposes of Article 3(3) in circumstances where as a result of that use a substantial proportion of the relevant trade and public (a) associate the shape with that trader and no other undertaking; (b) believe that goods of that shape come from that trader absent a statement to the contrary?"
[41]The Court's answer was (para. 63 et seq.):
"Second, the distinctive character of a sign consisting in the shape of a product, even that acquired by the use made of it, must be assessed in the light of the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (see, to that effect, the judgment of Gut Springenheide and Tusky , Case-C-210/96 [1998] ECR I-4657 , paragraph 31). Finally, the identification, by the relevant class of persons, of the product as originating from a given undertaking must be as a result of the use of the mark as a trade mark and thus as a result of the nature and effect of it, which make it capable of distinguishing the product concerned from those of other undertakings. In the light of those considerations, the answer to the third question must be that, where a trader has been the only supplier of particular goods to the market, extensive use of a sign which consists of the shape of those goods may be sufficient to give the sign a distinctive character for the purposes of Article 3(3) of the Directive in circumstances where, as a result of that use, a substantial proportion of the relevant class of persons associates that shape with that trader and no other undertaking or believes that goods of that shape come from that trader. However, it is for the national court to verify that the circumstances in which the requirement under that provision is satisfied are shown to exist on the basis of specific and reliable data, that the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect, are taken into account and that the identification, by the relevant class of persons, of the product as originating from a given undertaking is as a result of the use of the mark as a trade mark."
[42]So the Court indicates three things: that it " may [my emphasis] be sufficient" if the trader can show(a) association with him and no-one else, or(b) a public belief that goods of that shape come from him. But the national court must go on to consider the "presumed expectations" of the average consumer. For that purpose the identification of the product as originating from a given undertaking must be "as a result of the use of the mark as a trade mark " [my emphasis]. The Court did not stop with (a) and (b). What needs clarification is what more is needed.[43]For myself, I read this passage as saying that mere product recognition and association with one trader is not enough – it must be shown that the public has come to recognise the shape as a badge of origin. This is because the use must be as a trade mark. But the point is not wholly clear.[44]I believe this is a matter of significance. Many traders can show they have sold a product which is more or less recognised by the public. Many motor car shapes, for instance, are widely recognised. Likewise things like furniture and toys. If, once the public recognises the shape and knows it comes from a particular trader, the trader can, for that reason alone, register the shape as a trade mark, the trade mark registers of Europe will become registers of permanent monopolies in designs as well as registers of trade marks.[45]Now it might be said the answer to this point lies simply in the three heads of Art.3(1)(e) (nature of goods, technical result and substantial value). But I see no reason to bring any of these into play if the shape has never been used as a trade mark and, although recognised, is not taken by the public as a trade mark.[46]I turn back to this case. I do not think it has been proved that the public use the shape as a badge of trade origin. Yes, a substantial proportion recognise the product as Viennetta, a Walls product. But no, it is not shown they regard the shape alone as a trade mark. An acid test may be, what would happen in real life? Suppose another trader sold a product identical to Viennetta but using his own very different word trade mark. I do not actually know what the result would be. But the most likely reaction would seem to be no more than that "Oh X are doing a Viennetta-like ice-cream too." That is competition, not trade mark infringement.[47]In this connection it is as well to remember the real world in which customers buy Viennetta. They must do so by reading the label on the box in which it comes. They have to read it quite carefully because they have not only to identify the trade mark Viennetta, but also to pick out the particular flavour they want. They do not rely upon the shape or a picture of it as an indication of trade origin when buying. Indeed there is no attempt to prove that is so.[48]Mr Miller submitted that Unilever's poll evidence, having established product recognition, was enough to shift the onus of proof on to Nestlé to show that the public did not rely on the shape as a trade mark. He pointed out that over 50 of the "pollees" had confirmed their answers to the poll by a statutory declaration. So they could have been called for cross examination. He submitted that Nestlé did not dare to do this because they feared the answers. I do not agree. It was for Unilever to prove the shape had acquired a distinctive character. If their evidence does not come up to that, it does not. Not one of the statutory declarations from members of the public indicates reliance on shape - they just say they recognise the product.[49]What about the post-sale effect of the "mark"? Suppose a dinner party at which Viennetta is served on a plate without its box. Mr Miller submitted that the guests would take the product to be a Viennetta and that that would be enough for his purposes. I do not agree. Post sale effects of a trade mark are indeed important. They have always been so. The very earliest trade marks in history consist of marks on pottery which tell you both at the point of sale and always thereafter who the maker was. But I think the answer to the dinner party point is this: it is not proved that anyone being served a slice of Viennetta at a dinner party would in any way rely upon the shape to do anything. They may suppose the product is Viennetta but no more. And actually there is simply no direct evidence even of this.[50]There is another, quite different, reason why I do not regard the shape alone as having been established as a trade mark. It is not sufficiently distinctive. I revert back to the fact that 15% thought that one or more other icecream products were Viennetta. A trade mark must, in principle, be a unique identifier - denoting one trader and none other. If it is shown that it mainly so acts but also denotes, or may denote, others to a lesser but nonetheless substantial degree, then I think: - It is not "capable of distinguishing" (Art.3(1)(a)); - It is "devoid of distinctive character" (Art.3(1)(b)), and - It "has not acquired a distinctive character."[51]The hearing officer appears to have overlooked this point altogether - it does not seem to have been argued.[52]Accordingly I would refuse registration on two separate grounds:(1) Although substantial public recognition of the shape as that of a particular trader has been established, it has not been shown that the trader has used the shape to denote trade origin or that the public rely upon the shape to denote trade origin.(2) The shape in any event has not acquired a distinctive character because a minor but nonetheless significant proportion of the public would take other shapes in use by other traders as the shape mark applied for.[53]However I am conscious that the test for acquired distinctive character might be less, that it might be enough to prove that a shape has public recognition as the goods of a particular trader without the further qualification of recognition as a trade mark. Likewise the fact that a minor proportion of the public take the mark to mean other similar goods may be irrelevant, given the preponderance of those who recognise the shape as the product of a particular trader.[54]I therefore propose to ask questions of the ECJ based on those uncertain matters of law. The White Mark[55]This was said to raise a novel point of law. It was whether a use of a mark proved by use to have acquired a distinctive character can support a claim that a similar mark has acquired distinctiveness. It is not argued that the white mark can be registered without proof of acquired distinctiveness. But, says Mr Miller the dark mark is distinctive: the opinion poll shows that it is (a matter which, contrary to my opinion, I assume for present purposes). So the white mark can "piggy back" its way to distinctiveness on the basis of that.[56]I just do not see why. I can see how the point of law could arise on different facts – suppose a trader shows use of mark A has given it a distinctive character and he then applies to register an unused variant, A*. He proves (for instance by a poll) that the public takes A* as a trade mark denoting his goods. Then A* will have a "distinctive character" but not one acquired "following the use which has been made of it" (Art.3(3)). Can it nonetheless be registered?[57]If that point of law had arisen here, I would have referred it. For it does not make a great deal of sense to refuse marks proved to be actually distinctive depending on whether it was the actual mark or a close variant which was used. That is not what has happened here. There has been no attempt to prove that the white mark is actually distinctive. Unilever's case depends on an assumption that the answers for the dark mark poll would be the same if the white mark had been the subject of the poll. I do not see why. Use of the white mark was much less – under 2 years and only a small proportion of Viennetta sales as a whole. Many of the statutory declarations of members of the public refer to the dark chocolate on the top so their answers might well have been different. The hearing officer appeared to think there was no use of the white mark at all. In that he was wrong, but since there is no information whatever as to whether it is recognised and if so how widely, I do not think it matters. What the public reaction to the white mark would be remains unknown.[58]I would only add this. There can be cases where the difference between the marks as used and that sought to be registered is so trivial that one can fairly assume a virtually identical public reaction to each of them, (e.g. a non-dotted "i" in a word mark, or the omission of a space between two words, e.g. Think Pad and ThinkPad, IBM's Appn. [1998] ETMR 642). In such cases one can assume that a poll about one would be as good as a poll about the other. But that is miles from this case.[59]So I dismiss Unilever's white mark appeal.

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