Many trademark owners must be wishing that things were as easy as they are in South Africa when it comes to protecting product shapes as trademarks. After all the Supreme Court of Appeal in 2014 had no problem with Nestle’s trade mark registrations for the four-finger shape of its Kit Kat bar. The court accepted that it wasn’t barred by the functionality exclusion, because the shape had both functional and non-functional aspects. It also had no difficulty finding that the shape had become distinctive of Nestle’s goods over many years use. Nuanced issues such as whether or not the use had been in conjunction with other (arguably more important) marks like the name Kit Kat didn’t come into play.

It’s a far cry from how things are in Europe. Nestle has been struggling for years to get its Kit Kat shape registered. The UK High Court sent various legal questions to the Court of Justice of the EU (CJEU), which responded in a way that wasn’t very helpful to Nestle. The UK court has now ruled.

Judge Arnold said that the trademark owner must prove that a significant proportion of those who buy the product perceive the goods as originating from the trademark owner because of the shape, and not because of any other trademarks that might be used with the shape, such as the name Kit Kat. He felt that Nestle had failed to prove this. So the trademark application was refused.

Judge Arnold has also decided a case involving the validity of UK trade mark registrations for the shape of the famous London black cab. Once again he found that the marks weren’t distinctive. He said that, in order for a shape to be inherently distinctive, it must be unusual, although that fact alone does not necessarily make it inherently distinctive. In order to be distinctive through use, it’s necessary to prove that a significant proportion of the market perceives that the goods or services originate from a particular company because of the trademark in question, as opposed to any other trademark. This was not the case here. To top it all, he also found that the registrations breached the provision in EU and UK trademark law that says that a shape cannot be registered if it’s one that gives substantial value to the goods – he felt that the shape of the London cab does have value, and he noted that it had in fact been registered as a design. A black day.

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