Advocate General: No trade mark protection for KitKat chocolate bar

On 11 June 2015 the Advocate General gave his Opinion in the KitKat chocolate bar trademark dispute between the companies Société des Produits Nestlé SA (Nestlé) and Cadbury UK Ltd. (Cadbury) (C-215/14).

The request for a preliminary ruling from the High Court of Justice (England & Wales) concerns the interpretation of Art. 3 I (b), (e), no. (ii), (ii) and III of the Directive 2008/95/EC (Trademarks Directive; Directive). In the underlying case Cadbury filed an opposition against Nestlé’s application to register a three-dimensional sign representing the shape of a four-finger chocolate-coated wafer bar (“KitKat”-bar) as a trade mark in the United Kingdom.

The “KitKat” bar has been sold in a packaging bearing the “KitKat” logo for a long time. The basic shape of the product has remained almost entirely unchanged since 1935. The trade mark applied for differs from the shape of the product actually sold on the market in that the marketed version has the words “KitKat” embossed on the chocolate bar.

The Advocate General first points out that, in order to prove a distinctive character acquired through use, it was not necessary to use the mark applied for in an isolated form. However, the function of a trade mark was to guarantee the identity of the origin of goods. Therefore, for composite marks, a part of which was sought isolated trademark protection for due to acquired distinctiveness, it was necessary that the applicant showed that the mark applied for was viewed as an indication of origin by itself.

Concerning the question whether or not the grounds for refusal as foreseen in Art. 3 I (e) of the Directive could be applied cumulatively, the Advocate General found that such cumulative application was possible as long as at least one of the grounds “fully” applied. The Advocate General further interprets Art. 3 I (e) (ii) of the Directive to mean that a “shape which is necessary to obtain a technical result” does not only refer to the manner in which the goods function, but also refers to the manner in which they are manufactured.

In conclusion, if the CJEU agrees with the Advocate General’s Opinion, Nestlé would have to show that the form of the KitKat bar alone (i.e. without the packaging or the “KitKat” embossment on the chocolate bar) is understood as an indication of origin. If Nestlé could not prove this, Nestlé would not be able to protect the shape of the KitKat bar as a trade mark. Whether the judges actually agree with the Advocate General remains to be seen.