An application by confectionary giant Société des Produits Nestlé S.A. ("Nestlé") to register a three-dimensional trade mark for the four-fingered KIT KAT bar for chocolate and other goods has been
An application by confectionary giant Société des Produits Nestlé S.A. ("Nestlé") to register a three-dimensional trade mark for the four-fingered KIT KAT bar for chocolate and other goods has been rejected by a hearing officer at the UK Intellectual Property Office (" UK-IPO") except in relation to "cakes and pastries". It was held that the shape is necessary to obtain a technical result, namely breaking the bar into fingers and was devoid of any distinctive character.
The hearing officer upheld the opposition filed by Cadbury UK Limited ("Cadbury") under section 3(2)(b) and section 3(1)(b) of the UK Trade Marks Act 1994 finding that the shape of the chocolate bar was a variant of the common shape of chocolate bars and biscuits found in the trade and that the moulded grooves of the biscuit served the technical purpose of enabling the bar to be broken apart into "fingers" rather than as an aesthetic design.
The hearing officer went on to reject Nestlé's argument that the shape had acquired distinctiveness through use holding that even though they had shown recognition of the shape by a significant portion of the relevant public, they were not able to show that the shape had come to be relied upon as an indicator of trade origin necessary to satisfy the test of distinctiveness.
This decision is at odds with the ruling by the Office of Harmonization for the Internal Market ("OHIM") Board of Appeal in a cancellation action filed in 2012 by Cadbury against Nestlé's Community Trade Mark ("CTM") registration for the same shape where it was held that the shape was registrable and did not serve a purely technical function.
It is likely Nestlé will appeal the decision to try harmonise the rulings as it is now in a position where the same shape is protected in the UK, as a member state of the EU under the CTM registration, although Nestlé has had the majority of the goods in its national UK application refused.
For a more detailed discussion of this decision, please click here
The hearing officer upheld the opposition filed by Cadbury UK Limited ("Cadbury") under section 3(2)(b) and section 3(1)(b) of the UK Trade Marks Act 1994 finding that the shape of the chocolate bar was a variant of the common shape of chocolate bars and biscuits found in the trade and that the moulded grooves of the biscuit served the technical purpose of enabling the bar to be broken apart into "fingers" rather than as an aesthetic design.
The hearing officer went on to reject Nestlé's argument that the shape had acquired distinctiveness through use holding that even though they had shown recognition of the shape by a significant portion of the relevant public, they were not able to show that the shape had come to be relied upon as an indicator of trade origin necessary to satisfy the test of distinctiveness.
This decision is at odds with the ruling by the Office of Harmonization for the Internal Market ("OHIM") Board of Appeal in a cancellation action filed in 2012 by Cadbury against Nestlé's Community Trade Mark ("CTM") registration for the same shape where it was held that the shape was registrable and did not serve a purely technical function.
It is likely Nestlé will appeal the decision to try harmonise the rulings as it is now in a position where the same shape is protected in the UK, as a member state of the EU under the CTM registration, although Nestlé has had the majority of the goods in its national UK application refused.
For a more detailed discussion of this decision, please click here