Mr Justice Arnold today rejected Nestlé’s appeal to register the shape of the 4 finger KITKAT as a UK trade mark. We have previously blogged on the CJEU ruling in this case and I have commented extensively on this.
At its heart, the KITKAT case is about evidence. Nestle had compelling evidence that consumers already associated the shape of its bar with the KITKAT brand. However, they did not have evidence showing that consumers already relied upon that that shape when they were identifying the product before purchase. The question to the Court of Justice was intended to identify whether the first kind of evidence was sufficient to claim acquired distinctiveness or whether the second kind of evidence was also required. Unfortunately, the answer that came back fell somewhere in the middle. The Court confirmed that the first type of evidence was not necessarily sufficient but it did not insist that the second type of evidence was required. Instead, it said that the evidence must show that consumers perceived the trade mark as indicating exclusive origin from one commercial source.
Mr Justice Arnold’s interpretation of the answer is helpful and he concludes that it is legitimate, when assessing acquired distinctiveness, to consider whether the evidence shows that consumers would rely on the trade mark. My reading of the Court of Justice judgment was that it implies evidence showing that consumers could rely on the mark, which is broadly in line with Mr Justice Arnold’s interpretation. However, such an interpretation looks to the future behaviour of consumers, and is very different from a requirement for evidence that consumers have relied on the trade mark historically. This was essentially the original requirement imposed by the Hearing Officer at first instance and which Nestle failed to meet.
Unfortunately, however, Mr Justice Arnold has not been clear in his application of that test to the Hearing Officer’s decision. He acknowledged that the Hearing Officer appears to have referred to existing or historical reliance; however, he also considered that despite this reference, the Hearing Officer had nonetheless applied the correct test. He did not explain why he has reached this view. The judgment therefore leaves matters uncertain for Nestle and I doubt that this is the end of the KITKAT story.
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