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25 January, 2016

On 20 January 2016, the High Court has decided that the shape of the KitKat bar has not acquired the distinctiveness required for registration as a trade mark.

Arnold J had the job of interpreting a difficult judgment from the European Court of Justice, and felt that one of his questions to that court had not been adequately answered. However, he decided not to make a further reference to the European Court, as he doubted that a different result would be achieved.

The key question at issue was what kind of knowledge on the public’s part was enough to meet the “acquired distinctiveness” test: were recognition and association enough, or would Nestlé have to meet the harder test of showing that the public relied upon the shape (as opposed to any other marks present, such as the “KitKat” word), to indicate that the goods were Nestlé’s?

Arnold J doubted that the Court had correctly understood this question. This may have been because the Advocate-General and the rapporteur in the case were francophone, possibly working from a French translation of the questions asked. Arnold J looked at the official French translation of the question he had referred, and his view was that it was not a good rendition of the English meaning. It was also possible that the decision had been first written in another language before being translated into English: however, the final English version was the decisive text which he had to interpret.

Looking at the Court’s response to the “recognition and association” point, Arnold J found it clear that such kinds of response to the shape mark were not enough to demonstrate acquired distinctiveness. That left him to determine whether “reliance” upon the shape mark was also necessary.

He found that it was. His view was that the Court of Justice had found that the public had to recognise the shape as being Nestlé’s “because of the trade mark in question”. Given that, it was legitimate for him to consider whether the public would rely upon the sign, if it were used on its own. Upon the evidence, the first-instance decision from the Trade Mark Registry had been correct when it found that such “reliance” had not been shown.

For the present, then, the KitKat shape fails to meet the test for registration as a trade mark. But even though the original application for registration was made in 2010, it will not end here. Nestlé intends to appeal this latest decision from the High Court, and further references may be made to the European Court. It may be some time yet before we know what kind of evidence will meet the “reliance” requirement.