Societe des Produits Nestle SA v Cadbury UK Ltd
| Jurisdiction | England & Wales |
| Judge | The Hon Mr Justice Arnold,Mr Justice Arnold |
| Judgment Date | 17 January 2014 |
| Neutral Citation | [2014] EWHC 16 (Ch) |
| Docket Number | Case Nos: CH/2013/0392, CH/2013/0394 |
| Court | Chancery Division |
| Date | 17 January 2014 |
[2014] EWHC 16 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Rolls Building
Fetter Lane, London EC4A 1NLL
The Hon Mr Justice Arnold
Case Nos: CH/2013/0392, CH/2013/0394
Simon Thorley QC and Simon Malynicz (instructed by CMS Cameron McKenna) for the Appellant
Iain Purvis QC and Thomas Mitcheson (instructed by Bristows) for the Respondent
Hearing date: 20 December 2013
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Introduction
In what circumstances can a trader secure a perpetual monopoly in the shape of a product by registering it as a trade mark? That is the question raised by this appeal by Société des Produits Nestlé SA ("Nestlé") and cross-appeal by Cadbury UK Ltd ("Cadbury") from a decision of Allan James on behalf of the Registrar of Trade Marks dated 20 June 2013 (O/257/13). The shape in issue is essentially that of the well-known Kit Kat four-finger chocolate-coated wafer bar. It is clear that in principle European trade mark law permits the shape of a product to be registered as a trade mark. Surprisingly, however, certain aspects of the relevant law remain unclear. For the reasons explained below, I have concluded that it is necessary to seek clarification of the law from the Court of Justice of the European Union in order to determine the appeals.
Kit Kat
The four-finger product which is now sold by Nestlé under the name Kit Kat was first sold in the UK in 1935 by Rowntree & Co Ltd under the name Rowntree's Chocolate Crisp. In 1937 the name of the product was changed to Kit Kat Chocolate Crisp. After World War II, the name was shortened to Kit Kat. In 1988 what was by then Rowntree plc was acquired by Nestlé.
The product was for many years sold in two layers of packaging: an inner silver foil and an outer paper cover printed with a red-and-white logo featuring the words Kit Kat on the front. More recently, the product has been sold in a single layer of plastic packaging featuring the same logo. The design of the logo has evolved over the years without changing dramatically. The current form of the logo is reproduced below:
The basic shape of the product has altered very little since 1935, although its size has been slightly changed from time to time. The current appearance of the unwrapped product is shown below:
It can be seen that each finger is embossed with the words Kit Kat together with segments of the oval that forms part of the logo. From at least 1959 if not earlier to at least 1964 if not later each finger was embossed with the word Rowntree rather than the words Kit Kat. It is not clear from the evidence in this case when this was changed.
In addition to the four-finger version of Kit Kat, a two-finger version has also been sold for many years. More recently other variants have also been sold. For present purposes these other versions of the product can be ignored.
The application
On 8 July 2010 Nestlé applied to register the three-dimensional sign graphically represented below ("the Trade Mark") as a United Kingdom trade mark:
It can be seen that the Trade Mark differs from the shape of the actual product in that it omits the embossed words Kit Kat.
The application was made in respect of the following goods in class 30:
"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."
The application was accepted by the Trade Marks Registry and published for opposition on the basis that, although the Trade Mark was devoid of inherent distinctive character, the applicant had shown that the Trade Mark had acquired a distinctive character as a result of the use made of it prior to the application date.
The opposition
Cadbury opposed the application on various grounds, in particular that registration should be refused under sections 3(1)(b), 3(2)(a) and 3(2)(b) of the Trade Marks Act 1994. In response to Cadbury's reliance upon section 3(1)(b), Nestlé relied upon the proviso to section 3(1). These provisions give effect to Articles 3(1)(b), 3(1)(e)(i) and (ii) and 3(3) of European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) ("the Directive") and correspond to Articles 7(1)(b), 7(1)(e)(i) and (ii) and 7(3) of Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark ("the Regulation").
Cadbury adduced written evidence from the following witnesses: Mark Hodgin (Senior Trade Mark Counsel for Cadbury Holdings Ltd), Paul Walsh (a partner in Cadbury's solicitors) and Mark Robertson (a retired Senior Project Engineer formerly employed by Cadbury). Nestlé adduced written evidence from the following witnesses: Dale Carter (Intellectual Property Advisor for Nestlé UK Ltd), Sarah Gorjup (Homestock Brand Manager for Nestlé UK), Alex Hutchinson (Heritage Assistant for Nestlé UK), Clive Barnes (Assistant Vice-President of Nestlé's Research and Development Division) and Philip Malivoire (Divisional Director of GfK NOP, a market research agency). The hearing officer had the advantage of hearing Messrs Hodgin, Robertson, Barnes and Malivoire cross-examined on their written evidence.
The relevant provisions of the Directive
Articles 3(1)(b), 3(1)(e)(i) and (ii) and 3(3) of the Directive provide as follows:
" 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. …"
The hearing officer's decision
The hearing officer held that the Trade Mark was devoid of inherent distinctive character, and had not acquired a distinctive character, in relation to all goods covered by the application except "cakes" and "pastries". He also held that registration of the Trade Mark in relation to those goods was precluded on the ground that the Trade Mark consisted exclusively of the shape which is necessary to obtain a technical result. In relation to "cakes" and "pastries", however, he held that the Trade Mark was inherently distinctive and registration was not precluded. The hearing officer's reasoning may be summarised as follows.
Inherent distinctive character
Having directed himself in accordance with the judgment of the Court of Justice in Case C-136/02 Mag Instrument Inc v Office for Harmonisation in the Internal Market (Trade Marks and Designs) 62002CJ0136"> [2004] ECR I-9165 at [29]–[31], the hearing officer found at [92] that "third party two finger versions of the shape applied for were on the UK market in a significant way" and that "other products consisting essentially of a number of joined chocolate fingers separated by breaking grooves had also been present on the UK market" prior to the relevant date. He also found at [93] that the average consumer of chocolate products would see the shape "as representing no more than four conjoined chocolate fingers separated by grooves to make it easy to break the individual fingers apart for the purposes of consumption".
On this basis he concluded as follows:
"94. In my judgment, the shape is therefore within the norms and customs of the sector and/or is a mere variant on common shapes for chocolate bars and biscuits, i.e. rectangular bars with breaking grooves resulting in individual pieces or 'fingers'. The shape is not such as to permit average consumers to distinguish the product concerned from those of other undertakings. The shape mark is therefore prima facie devoid of any distinctive character.
95. Chocolate bars and biscuits are covered by all the following terms.
'Chocolate; chocolate confectionery; chocolate products; confectionery; chocolate-based preparations; biscuits; biscuits having a chocolate coating; chocolate coated wafer biscuits; bakery products; cookies; wafers.'
96. The shape does not look similar to any cake or pastry I have seen. There is no evidence to assist me one way or the other, but I find that the shape is outside the norms and customs of the sector and would be capable of distinguishing the trade origin of cakes or pastries, whether as the highly unusual shape of the goods or otherwise."
Acquired distinctive character
As the hearing officer recorded at [11]–[13] and [100]–[102], Nestlé adduced evidence that Kit Kat was the sixth, third and third best-selling chocolate product in the UK in 2005, 2006 and 2007 with sales of £25–33 million per annum. Nestlé spent between £3 million and £11 million per annum promoting Kit Kat in the UK between 1996 and 2007, most of which was directed at the four-finger version. Although some examples of advertising from 2003 and 2007 were provided, these did not show the shape of the product. Between £850,000 and £4.4 million was spent promoting the product in the years 2008, 2009 and 2010. No examples of such promotion were provided so it was not possible to establish whether this included promoting the product by reference to its shape. Sales of over £40 million per annum...
To continue reading
Request your trial
-
Enterprise Holdings, Inc. v Europcar Group UK Ltd and Another
...in England and Wales were born in the USA. Acquired distinctive character 144 I reviewed the law on this subject in Société des Produits Nestlé SA v Cadbury UK Ltd [2014] EWHC 16 (Ch), [2014] ETMR 17 at [39]–[48]. As I explained there, the following propositions of law are settled. First,......
-
The London Taxi Corporation Ltd trading as the London Taxi Company v Frazer-Nash Research Ltd and Another
...of distinctive character by trade marks consisting of the shape of a product in Société des Produits Nestlé SA v Cadbury UK Ltd [2014] EWHC 16 (Ch), [2014] ETMR 17 at [39]–[48]. For the reasons explained in that judgment, I referred the following question to the CJEU: "In order to establi......
-
The Ukulele Orchestra of Great Britain v Erwin Clausen and Another
...Group UK Ltd [2015] EWHC 17 (Ch); [2015] E.T.M.R, including the following: "[144] I reviewed the law on this subject in Société des Produits Nestlé SA v Cadbury UK Ltd [2014] EWHC 16 (Ch); [2014] E.T.M.R. 17 at [39]–[48]. As I explained there, the following propositions of law are settle......
-
W3 Ltd v Easygroup Ltd
...[2004] ECR I-1619 at [97]. 156 Acquired distinctive character. I reviewed the law on acquired distinctiveness in Société des Produits Nestlé SA v Cadbury UK Ltd [2014] EWHC 16 (Ch), [2014] ETMR 17 (“ Nestlé v Cadbury I”) at [39]–[48] and Enterprise v Europcar at [151]–[152]. The following ......
-
Intellectual Property Law
...des Produits Nestlé SA v Petra Foods Ltd [2017] 1 SLR 35 at [46]. 241 Case C-215/14 Société des Produits Nestlé SA v Cadbury UK Ltd [2014] ETMR 17, Opinion of AG Wathelet, para 55. 242 Société des Produits Nestlé SA v Cadbury UK Ltd [2015] Bus LR 1034 at [67]. 243 Oberbank AG v Deutscher Sp......
-
DISENTANGLING FUNCTIONALITY, DISTINCTIVENESS AND USE IN AUSTRALIAN TRADE MARK LAW.
...I-5518 [83]. (227) See Bone, 'Trademark Functionality Reexamined' (n 82) 231-5. (228) Societe des Produits Nestle SA v Cadbury UK Ltd [2014] FSR 28. (229) Hauck (n 10) [39]-[43]; Societe des Produits Nestle SA v Cadbury UK Ltd (Court of Justice of the European Union, C-215/14, ECLI:EU:C:201......