Société Des Produits Nestlé SA v Cadbury UK Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold |
| Judgment Date | 20 January 2016 |
| Neutral Citation | [2016] EWHC 50 (Ch) |
| Docket Number | Case No: CH/2014/0392, CH/2013/0394 |
| Court | Chancery Division |
| Date | 20 January 2016 |
[2016] EWHC 50 (Ch)
The Hon Mr Justice Arnold
Case No: CH/2014/0392, CH/2013/0394
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Rolls Building
Fetter Lane, London, EC4A 1NL
Michael Bloch QC and Simon Malynicz (instructed by CMS Cameron McKenna) for the Appellant
Thomas Mitcheson QC (instructed by Bristows) for the Respondent
Hearing date: 13 January 2016
Introduction
On 8 July 2010 Société des Produits Nestlé SA ("Nestlé") applied to register the three-dimensional sign graphically represented below ("the Trade Mark") as a United Kingdom trade mark in respect of various goods in Class 30:
The Trade Mark corresponds to the shape of Nestlé's four-finger KIT KAT product except that it lacks the KIT KAT logo embossed onto each of the fingers of the actual product:
The application was subsequently opposed by Cadbury UK Ltd ("Cadbury") 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.
In a decision dated 20 June 2013 (O/257/13) Allan James on behalf of the Registrar of Trade Marks 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 was necessary to obtain a technical result. In relation to "cakes" and "pastries", however, he held that the Trade Mark was inherently distinctive and that registration was not precluded.
Nestlé appealed against the hearing officer's decision to refuse registration of the Trade Mark except in relation to "cakes" and "pastries" and Cadbury cross-appealed against his decision to permit registration of the Trade Mark in relation to "cakes" and "pastries". In a judgment dated 17 January 2014 ( [2014] EWHC 16 (Ch), [2014] ETMR 17, "my first judgment") I concluded that the hearing officer was incorrect to find that the Trade Mark was inherently distinctive in relation to "cakes" and "pastries", but in relation to the issues of acquired distinctiveness and necessity to obtain a technical result I concluded that it was necessary to seek clarification of the law from the Court of Justice of the European Union in order to determine the appeals. Accordingly, I referred three questions to the CJEU for a preliminary ruling. Question 1 concerned acquired distinctiveness and questions 2 and 3 concerned necessity to obtain a technical result. In order to shorten this judgment, I shall assume that the reader is familiar with my first judgment and with my decision sitting as the Appointed Person in Vibe Technologies Ltd's Application [2009] ETMR 12 which is referred to in my first judgment.
The Court of Justice delivered its judgment on 16 September 2015. Cadbury accepts that, in the light of the Court's answers to questions 2 and 3, registration of the Trade Mark is not precluded by section 3(2)(b) of the 1994 Act corresponding to Article 3(1)(e)(ii) of the Directive. Accordingly, I shall say no more about that aspect of the appeals. The parties are disagreed, however, as to the effect of the Court's answer to question 1, although the extent of that disagreement narrowed during the course of argument.
The previous case law of the Court of Justice
I considered the previous case law of the Court of Justice with respect to acquired distinctiveness in Vibe at [61]–[68] and [91], and in particular its judgment in Case C-353/03 Société des produits Nestlé SA v Mars UK Ltd [2005] ECR I-6135. For convenience, I shall set out the key passage from that judgment:
"25. Whether inherent or acquired through use, distinctive character must be assessed in relation, on the one hand, to the goods or services in respect of which registration is applied for and, on the other, to the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (judgment in Case C-299/99 Philips [2002] ECR I-5475, paragraphs 59 and 63).
26. In regard to acquisition of distinctive character through use, the identification, by the relevant class of persons, of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark (judgment in Philips, paragraph 64).
27. In order for the latter condition, which is at issue in the dispute in the main proceedings, to be satisfied, the mark in respect of which registration is sought need not necessarily have been used independently.
28. In fact Article 3(3) of the directive contains no restriction in that regard, referring solely to the 'use which has been made' of the mark.
29. The expression 'use of the mark as a trade mark' must therefore be understood as referring solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking.
30, Yet, such identification, and thus acquisition of distinctive character, may be as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designated exclusively by the mark applied for, as originating from a given undertaking."
The question referred
Question 1 was in the following terms:
"In order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of Directive 2008/95 …, 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 consider 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?"
It is fair to say that the distinction which was drawn in this question is a subtle one which may appear rather elusive to those who are not experienced in trade mark law. As was explained in my first judgment, and in more detail in Vibe before that, however, the distinction is one which has exercised the English courts for well over a decade. (Indeed, as counsel for Nestlé rightly pointed out, it is a distinction which in the related context of the law of passing off has exercised our courts since at least Hodgkinson & Corby Ltd v Wards Mobility Ltd [1994] 1 WLR 1564.)
Furthermore, as was also explained in my first judgment, and in more detail in Vibe before that, the question was based on two previous requests for preliminary rulings from this Court to the Court of Justice, neither of which had yielded an answer.
For those reasons, I attempted to formulate the question with precision.
My provisional view
In my first judgment, I said at [55]:
"In case it assists the Court of Justice, it is my opinion that, for the reasons I explained in Vibe, the correct answer to the question is that the applicant must prove that a significant proportion of the relevant class of persons rely upon the trade mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods."
The procedure on the reference
The language regime in preliminary ruling proceedings
In preliminary ruling proceedings before the CJEU, the language of the case is the language of the referring court or tribunal: Article 37(3) of the Rules of Procedure of the Court of Justice of 25 September 2012 ("RPCJ"). In the present case, therefore, the language of the case was English.
The language of the case must be used in the written and oral pleadings of the parties: Article 38(1) RPCJ. Any document that is expressed in another language must be accompanied by a translation into the language of the case: Article 38(2). Nevertheless Member States who intervene may use their own official language, in which case the Registrar shall arrange for translation into the language of the case: Article 38(4). The President, Chambers Presidents, Judges and Advocate Generals of the Court may also use another language, in which case the Registrar shall arrange for translation into the language of the case: Article 38(8).
Article 41 RPCJ provides:
"The texts of documents drawn up in the language of the case or, where applicable, in another language authorised pursuant to Articles 37 or 38 of these Rules shall be authentic."
Counsel for Nestlé submitted, and I agree, that the reason for this rule is to avoid disputes arising as to what a...
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