A generous katpat goes to aspiring young barrister Katherine Moggridge (a pupil at 3 New Square: both a Kat and a Mog, which scores pretty well on this weblog) for alerting the Kats to a recent decision of the United Kingdom's Trade Mark Registry: it's O-237-13 Société des Produuits Nestlé SA's application; opposition of Cadbury UK Ltd, a ruling on 20 June from none other than Katfriend Allan James. But what's it all about?
(i) did this mark consist exclusively of the shape of the goods which was necessary to obtain a technical result (i.e. did the shape assist in the product’s manufacture and facilitate the division and consumption of the goods)?Allan James considered Cadbury's technical functionality objections at some length. He identified the essential features of the mark applied for as being the rectangular ‘slab’ shape (including the length, width and depth and their relative proportions); the breaking grooves along the length of the bar (including their presence, position and depth) which divide the bar into ‘fingers’ and the number of these grooves. Having completed this task he concluded thus:
(ii) was the mark devoid of distinctive character and, if it didn't have one in the first place, had it acquired it?
“The exclusion under s.3(2)(b) [of the UK's Trade Marks Act 1994, = Article 3(1)(e)(ii) of Directive 2008/95, the trade mark approximation directive] therefore applies where the essential features of the shape are attributable only to a technical result. Other minor arbitrary features which make no real impact on consumers do not prevent the exclusion applying if the essential features of the shape are caught by the exclusion.”
“i) The basic rectangular ‘slab’ shape represented by the mark is a shape which results from the nature of moulded chocolate bars or moulded chocolate biscuits sold in bar form;
ii) The presence of breaking grooves is a feature which is necessary to achieve a technical result;
iii) An angle of more than 8-10 degrees for the sides of the product, and for the breaking grooves, results from the nature of moulded chocolate products and the depth of the grooves is necessary to achieve a technical result;
iv) The number of breaking grooves and fingers is determined by the desired portion size”.
“.. trade marks are intended to permit consumers to make informed choices between the competing goods of different undertakings in the course of trade. Therefore showing that the public know who usually makes goods of a particular shape, without also showing that such recognition plays some part in the trade in such goods, does not show that the shape has become a trade mark for the goods.”
“They [consumers] associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”
On checking his records, this note that his good friend Aaron Wood also tipped him off about this decision, in an email that got buried under all the others. Aaron gets a katpat too!