“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.”
“Article 3 Grounds for refusal or invalidity 1. The following shall not be registered or, if registered, shall be liable to be declared invalid: … (b) trade marks which are devoid of any distinctive character; … (e) signs which consist exclusively of: (i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; … 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. …”
“I would now like to show you a sweet or biscuit product. Could you please tell me what this product makes you think of? And still looking at this picture, can you think of anything else it makes you think of?”
“Please look at this picture. Please let me know when you are ready to continue. (1) What, if anything, can you tell me about this?”
“(2) And what else, if anything can you tell me about it?”
“(3 ) You mentioned (brand name). Why was that?”
“What else, if anything?”
“(4) What, if anything, can you tell me about the appearance of this?”
“(5) Finally, is there anything else that you would like to say about this?”
“Ultimately, it is not possible to tell from a series of short answers exactly how many of the respondents were sure that the shape shown to them was a KIT KAT, but going through the answers I think it is safe to conclude that at least half the respondents gave answers which probably meant that they thought that the shape shown to them was the product known as KIT KAT. That is not really surprising given that the product has been sold in the same shape in the UK in substantial volumes since the 1930s. Most people will therefore have eaten one at one time or another. For that reason I do not think that there is anything in [counsel for Cadbury]’s further criticism that the second survey was conducted around 20 months after the relevant date.”
“… the survey evidence described above shows that at least half the people surveyed thought that the picture shown to them depicted a KIT KAT product. … ”
“In my view, the applicant has shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery (only), but not that consumers have come to rely on the shape to identify the origin of the goods. This is because: i) There is no evidence that the shape of the product has featured in the applicant’s promotions for the goods for many years prior to the date of the application; ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods; iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended trade source. In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Néstle), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”
“In my view, the essential features of the shape at issue are: i) The rectangular ‘slab’ shape of the mark as it appears on the form of application including the relative proportions of length, width and depth; ii) The presence, position and depth of the breaking grooves arranged along the length of the bar, which effectively divide the bar into detachable ‘fingers’; iii) The number of such grooves, which together with the width of the bar determine the number of ‘fingers’.”
“70. … there is nothing in the wording of s.3(2)(a) which indicates that only shapes for natural products fall within its scope. … In my view, the provision potentially covers shapes which result from nature of the way that man-made goods are made and sold. Further, it is now established that the words ‘the shape’ in sub-sections (b) and (c) of s.3(2) cover each and every shape which is necessary to achieve a technical result or which adds substantial value to the goods because of its aesthetic appeal. By parity of reasoning it appears to me that s.3(2)(a) should likewise be taken to cover any shape which results from the nature of the goods themselves, whether or not there are other shapes in use for those goods (whilst accepting that a real diversity of shapes is likely to mean that there are no shapes that result from the nature of the goods themselves). … 72. I consider that the basically rectangular ‘slab’ shape of goods represented by the mark is a shape which results from the nature of a bar of moulded chocolate (which may, or may not, contain wafer, or some other filing) or of a moulded chocolate biscuit sold in bar form. It is obviously an easy and cheap way to provide the consumer with a given amount of chocolate product in a shape which presents less difficulty to mould, wrap and stock than other fancier shapes. That is no doubt why most moulded chocolate bars take the same basically rectangular ‘slab’ shape. 73. The fact that some moulded and other enrobed chocolate products do not take the shape of a rectangular slab does not mean that this cannot be the basic shape which results from the nature of moulded chocolate bars or chocolate biscuits moulded in bar form. Rather what it means is that some other moulded chocolate bars do not consist of the shape which results from the nature of the goods themselves.”
“75. The presence of breaking grooves is necessary to achieve a technical result: to permit the product to be broken up for consumption. There is a choice as to whether to run the grooves horizontally across the width of the bar or vertically down its length or (probably not in the case of wafer bars) both. 76. The depth of the grooves is a compromise between the minimum depth required at the point where the fingers are joined in order for the product to retain structural integrity in manufacture and transit, and the maximum permissible depth before consumers would have difficulty in breaking the bar up cleanly into regular shaped and conveniently consumable fingers. A greater depth of groove is likely to be necessary in order to break the fingers cleanly where (as in the mark) the fingers run vertically along the whole length of the bar (and therefore result in a longer breaking joint) compared to what would be required if the grooves ran horizontally along the shorter width of the bar. 77. Once the other parameters are settled, the number of ‘fingers’ is determined by the size of the chosen portion. The number of fingers is no more arbitrary than the length of a Lego brick. … Similarly, supplying bars with varying amounts of chocolate/chocolate wafer (and therefore more or fewer fingers) meets consumers needs for more or less of the product depending on their appetite at the time of purchase. Or to put it another way, once it has been decided to supply the product in the form of conjoined breakable fingers, the number of fingers simply reflects the portion size. 78. The evidence indicates that the angle of the sides of the product, and of the breaking grooves, is constrained by the method of manufacture. The moulding process requires a minimum release angle of 8-10 degrees. The angle shown in the mark is 14 degrees, which Mr Barnes accepted would look similar to consumers. 79. I accept that the angle of the sides of the fingers could be made larger resulting in fingers with a noticeably more squat appearance, although still trapezoidal in cross section. At most, this means that the use of angles of specifically 14 degrees is a minor arbitrary element of the overall shape. Whilst the angle of the sides and grooves may make a minor contribution to the overall shape of the product, it is not something which would catch consumers’ attention as a feature of the shape, let alone an essential feature of the shape.”
“In such circumstances an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.”
“1. In order to establish that a trade mark has acquired a distinctive character following the use that had been made of it within the meaning of Article 3(3) of Directive 2008/95/EC, is it sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods in the sense that, if they were to be asked who marketed goods bearing that mark, they would identify the applicant; or must the applicant prove that a significant proportion of the relevant class of persons rely upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?”
“76. … If any one of the criteria listed in Article 3(1)(e) is satisfied, a sign consisting exclusively of the shape of the product or of a graphic representation of that shape cannot be registered as a trade mark. 77. The various grounds for refusal of registration listed in Article 3 of the Directive must be interpreted in the light of the public interest underlying each of them (see, to that effect, Windsurfing Chiemsee, paragraphs 25 to 27). 78. The rationale of the grounds for refusal of registration laid down in Article 3(1)(e) of the Directive is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors. Article 3(1)(e) is thus intended to prevent the protection conferred by the trade mark right from being extended, beyond signs which serve to distinguish a product or service from those offered by competitors, so as to form an obstacle preventing competitors from freely offering for sale products incorporating such technical solutions or functional characteristics in competition with the proprietor of the trade mark. 79. As regards, in particular, signs consisting exclusively of the shape of the product necessary to obtain a technical result, listed in Article 3(1)(e), second indent, of the Directive, that provision is intended to preclude the registration of shapes whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trade mark right would limit the possibility of competitors supplying a product incorporating such a function or at least limit their freedom of choice in regard to the technical solution they wish to adopt in order to incorporate such a function in their product. 80. As Article 3(1)(e) of the Directive pursues an aim which is in the public interest, namely that a shape whose essential characteristics perform a technical function and were chosen to fulfil that function may be freely used by all, that provision prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see, to that effect, Windsurfing Chiemsee, paragraph 25). 81. As to the question whether the establishment that there are other shapes which could achieve the same technical result can overcome the ground for refusal or invalidity contained in Article 3(1)(e), second indent, there is nothing in the wording of that provision to allow such a conclusion. 82. In refusing registration of such signs, Article 3(1)(e), second indent, of the Directive reflects the legitimate aim of not allowing individuals to use registration of a mark in order to acquire or perpetuate exclusive rights relating to technical solutions. 83. Where the essential functional characteristics of the shape of a product are attributable solely to the technical result, Article 3(1)(e), second indent, precludes registration of a sign consisting of that shape, even if that technical result can be achieved by other shapes. 84. In the light of those considerations, the answer to the fourth question must be that Article 3(1)(e), second indent, of the Directive must be interpreted to mean that a sign consisting exclusively of the shape of a product is unregistrable by virtue thereof if it is established that the essential functional features of that shape are attributable only to the technical result. Moreover, the ground for refusal or invalidity of registration imposed by that provision cannot be overcome by establishing that there are other shapes which allow the same technical result to be obtained.”
“43. In considering that complaint, it must be borne in mind that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 must be interpreted in the light of the public interest underlying them (Henkel v OHIM, paragraph 45, andCase C-173/04 P Deutsche SiSi-Werke v OHIM[2006] ECR I-551 , paragraph 59). The interest underlying Article 7(1)(e)(ii) of Regulation No 40/94 is to prevent trade mark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product (see by analogy, with regard to the second indent of Article 3(1)(e) of Directive 89/104, Philips, paragraph 78, and Joined Cases C-53/01 to C-55/01 Linde and Others[2003] ECR I-3161 , paragraph 72). 44. In that connection, the rules laid down by the legislature reflect the balancing of two considerations, both of which are likely to help establish a healthy and fair system of competition. 45. First, the inclusion in Article 7(1) of Regulation No 40/94 of the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result ensures that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions. 46. When the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, protection of that shape as a trade mark once the patent has expired would considerably and permanently reduce the opportunity for other undertakings to use that technical solution. In the system of intellectual property rights developed in the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators. As OHIM pointed out in its argument summarised in paragraph 37 above, that consideration underlies not only Directive 89/104 and Regulation No 40/94, with regard to trade mark law, but also Regulation No 6/2002, in relation to designs. 47. Furthermore, the legislature has laid down with particular strictness that shapes necessary to obtain a technical result are unsuitable for registration as trade marks, since it has excluded the grounds for refusal listed in Article 7(1)(e) of Regulation No 40/94 from the scope of the exception under Article 7(3). If follows, therefore, from Article 7(3) of the regulation that, even if a shape of goods which is necessary to obtain a technical result has become distinctive in consequence of the use which has been made of it, it is prohibited from being registered as a trade mark (see by analogy, in relation to Article 3(3) of Directive 89/104, which is essentially identical to Article 7(3) of Regulation No 40/94, Philips, paragraph 57, andCase C-371/06 Benetton Group[2007] ECR I-7709 , paragraphs 25 to 27). 48. Second, by restricting the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result, the legislature duly took into account that any shape of goods is, to a certain extent, functional and that it would therefore be inappropriate to refuse to register a shape of goods as a trade mark solely on the ground that it has functional characteristics. By the terms ‘exclusively’ and ‘necessary’, that provision ensures that solely shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings, are not to be registered … 51. As regards the fact that the ground for refusal covers any sign consisting ‘exclusively’ of the shape of goods which is necessary to obtain a technical result, the General Court stated, at paragraph 38 of the judgment under appeal, that that condition is fulfilled when all the essential characteristics of a shape perform a technical function, the presence of non-essential characteristics with no technical function being irrelevant in that context. 52. That interpretation is consistent with paragraph 79 of Philips. Moreover, it reflects the idea underlying that judgment, as set out by Advocate General Ruíz-Jarabo Colomer at point 28 of his Opinion in that case and also at point 72 of his Opinion inCase C-363/99 Koninklijke KPN Nederland[2004] ECR I-1619 , that is to say, that the presence of one or more minor arbitrary elements in a three-dimensional sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, does not alter the conclusion that the sign consists exclusively of the shape of goods which is necessary to obtain a technical result. In addition, since that interpretation implies that the ground for refusal under Article 7(1)(e)(ii) of Regulation No 40/94 is applicable only where all the essential characteristics of the sign are functional, it ensures that such a sign cannot be refused registration as a trade mark under that provision if the shape of the goods at issue incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape. 53. As regards the condition that registration of a shape of goods as a trade mark may be refused under Article 7(1)(e)(ii) of Regulation No 40/94 only if the shape is ‘necessary’ to obtain the technical result intended, the General Court rightly found, at paragraph 39 of the judgment under appeal, that that condition does not mean that the shape at issue must be the only one capable of obtaining that result.”
“Once the sign’s essential characteristics have been identified, the competent authority still has to ascertain whether they all perform the technical function of the goods at issue. As has been observed at paragraph 52 above, Article 7(1)(e)(ii) of Regulation No 40/94 cannot be applicable where the application for registration as a trade mark relates to a shape of goods in which a non-functional element, such as a decorative or imaginative element, plays an important role. In that case, competitor undertakings easily have access to alternative shapes with equivalent functionality, so that there is no risk that the availability of the technical solution will be impaired. That solution may, in that case, be incorporated without difficulty by the competitors of the mark’s proprietor in shapes which do not have the same non-functional element as that contained in the proprietor’s shape and which are therefore neither identical nor similar to that shape. ”
“In examining the functionality of a sign consisting of the shape of goods, once the essential characteristics of the sign have been identified, it is only necessary to assess whether those characteristics perform the technical function of the product concerned. ….”
“2. Where a shape consists of 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, is registration of that shape as a trade mark precluded by Article 3(1)(e)(i) and/or (ii) of Directive 2008/95/EC? 3. Should Article 3(1)(e)(ii) of Directive 2008/95/EC be interpreted as precluding registration of shapes which are necessary to obtain a technical result with regard to the manner in which the goods are manufactured as opposed to the manner in which the goods function?”