Shape which results from manufacturing process can be a trade mark and Distinctive character must not be assessed in relation to other signs

C-215/14

Société des Produits Nestlé

Trade marks: Validity

16 Sep 2015

The matter at hand

Nestlé filed an application for registration of the 'four-finger' shape of its KIT KAT bar as a trade mark in the United Kingdom. Cadbury opposed this application, putting forward in particular that the application was devoid of distinctive character, that it consisted exclusively of the shape which results from the nature of the goods themselves and that it consisted exclusively of the shape of the goods which is necessary to obtain a technical result (Articles 3(1)(b), 3(1)(e)(i) and 3 (1)(e)(ii) of the Trade Mark Directive respectively).

The referring court raised three questions:

i) whether Article 3(1)(e) of the Trade Mark Directive precludes 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;

ii) whether Article 3(1)(e)(ii) of the Trade Mark Directive refers only to the manner in which the goods at issue function of whether it also applies to the manner in which they are manufactured; and

iii) whether, in order to establish that a trade mark has acquired distinctive character (within the meaning of Article 3(3) of the Trade Mark Directive), it is sufficient for the applicant to prove that a significant proportion of the relevant class of persons recognise the mark (i.e. the four finer shape) and associate it with the applicant's goods, or that it is required for it to prove that they rely upon the mark as indicating the origin of the goods, as opposed to any other trade marks which may also be present (such as the name 'KIT KAT').

The judgment of the ECJ

With regard to the question mentioned to under i), the ECJ reefers to its judgment in Hauck (C-205/13), in which it held that the three grounds for refusal of registration set out in Article 3(1)(e) operate independently of one another. It concludes that, consequently, where ''a sign may be covered by one or more grounds of refusal set out under Article 3(1)(e) of the Trade Mark Directive (...), registration may be refused only where at least one of those grounds is fully applicable to the sign at issue'' (paragraph 48).

In response to the question referred to under ii), the ECJ first observes that the wording of Article 3(1)(e)(ii) of the Trade Mark Directive ''refers expressly to the shape of goods which is necessary to obtain a 'technical result', without mentioning the process for manufacturing those goods'' (paragraph 54). The ECJ moreover considers that this interpretation ''is confirmed by the objective of Article 3(1)(e)(ii) of the Trade Mark Directive, which consists (...) in preventing a monopoly from being granted on technical solutions which a user is likely to seek in the goods of competitors'' (paragraph 55). As, according to the ECJ, ''from the consumer's perspective, the manner in which the goods function is decisive and their method of manufacture is not important'' (paragraph 55), it concludes that Article 3(1)(e)(ii) of the Trade Mark Directive ''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'' (paragraph 57).

Then, with regard to the question mentioned under iii), the ECJ effectively limits itself to repeating established case law to reach the conclusion that ''although the trade mark for which registration is sought may hav been used as part of a registered trade mark or in conjunction with such a mark, the fact remains that, for the purposes of the registration of the mark itself, the trade mark applicant must prove that that mark alone, as opposed to any other trade mark which ma also be present, identifies the particular undertaking from which the goods originate'' (paragraph 66).

Commentary

The ECJ seems to have misunderstood this question – but provided for an answer nonetheless. upon reading the question raised by the referring court, it seems it wanted to learn whether a sign can acquire distinctive character through use, even where the public effectively does not establish the origin through recognition of this sign – as one or more other signs fulfil this function (i.e. more dominant signs are also applied to the product). Applied to Kit Kat: the public may be considered not to use the four finger shape as a source identifier when they are presumed to identify the source by reading 'KIT KAT', or by seeing a flat rectangular shaped product in red, with a white oval and red lettering on it (where 'KIT KAT' and the product design would, in other words, be perceived as the dominant signs). However, the answer of the ECJ (i.e. that proof evidencing that a sufficiently large part of the relevant public identifies the good as being from a specific source based on just the trade mark applied for) implies that it is not relevant whether other, more dominant trade marks used for the same goods effectively make the applied for trade mark superfluous from the perspective of source identifying.