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Wednesday, 16 September 2015

BREAKING NEWS: CJEU says that acquired distinctiveness requires that mark alone identifies relevant undertaking (but 'how' does not seem so clear)

What is required to prove that a trade mark has acquired distinctiveness through use? Can a shape consisting of three essential features that either result from the nature of the goods themselves or are necessary to obtain a technical result be registered as a trade mark? Is it possible to register a shape that is necessary to obtain a technical result with regard to the manner in which the goods are manufactured as opposed to the manner in which they function?

In a nutshell, these were the issues on which Arnold J had sought guidance [Katpost here] from the Court of Justice of the European Union (CJEU), in the context of proceedings between Nestlé and Cadbury (the latter now owned by Mondelēz) regarding the possibility for the former to register the shape of its KitKat chocolate bar as a trade mark.

This 2014 Arnoldian reference for a preliminary ruling followed a 2013 decision of the UK Trade Mark Registry [noted here], in which hearing officer Allan James sided with Cadbury, and held that the shape of this distinctive famous chocolate bar could not be registered as a trade mark.

Note that the actual KitKat bar is brown
More specifically Arnold J referred the following questions to the CJEU in Case C-215/14 Nestlé v Cadbury:

1) 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 [the Trade Marks Directive], 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? [the latter being a stricter (too strict?) requirement, yet the one traditionally favourited by UK courts and indicated by Arnold himself as the preferable approach, lacking specific guidance from the CJEU. With regard to the latter and for the sake of history, EU's highest judicature had been given (in vain) the possibility of addressing acquired distinctiveness in shape marks in the context of a reference regarding the shape of Viennetta ice cream and in Dyson, respectively. While the Viennetta case was settled and the reference subsequently dropped, in Dyson the CJEU did not really address this point]
2) Where a shape consists of three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, is registration of that shape as a trade mark precluded by Article 3(1)(e)(i) and/or (ii) of [the Trade Marks Directive]? [readers may recall that this issue has been recently addressed in Hauck, also known as the Tripp Trapp case and noted here]
3) Should Article 3(1)(e)(ii) of [the Trade Marks Directive] be interpreted as precluding registration of shapes which are necessary to obtain a technical result with regard to the manner in which the goods are manufactured as opposed to the manner in which the goods function?’
The AG Opinion

Last June Advocate General (AG) Wathelet issued his Opinion [discussed here and here], in which he held the view that: 

1) Something more than mere recognition/association is required to prove acquired distinctiveness. More specifically, the applicant needs to demonstrate that "only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services at issue." [but is this a reliance test or is it something less demanding?]

2) The response to the second question may be found in the CJEU judgment in Hauck, although "the scope of that response should not be misconstrued" (para 65). The absolute grounds for refusal regarding shape marks may be applied cumulatively, provided that each of them or at least one of them fully applies to the shape in question.

(3) The response to the third question should be in the affirmative.

Is this cute form of reliance
also required for acquired distinctiveness?
The CJEU decision

This morning the CJEU issued its much-awaited 68-paragraph judgment

Following some preliminary observations, the Court began its analysis from Question 2.

Absolute grounds for refusal to be applied independently and (potentially) cumulatively 

The CJEU recalled the rationale underlying the absolute grounds for refusal in Article 3(1)(e) of the Trade Marks Directive, this being to prevent trade mark protection from granting its proprietor a potentially permanent monopoly on technical solutions or functional characteristics of goods which a user is likely to seek in the goods of competitors (paras 44 and 45).

Recalling its earlier judgment in Hauck, the CJEU held that that the three grounds for refusal in Article 3(1)(e) operate independently of one another, and it does not matter whether the sign in question could be denied registration on the basis of a number of grounds for refusal, so long as any one of those grounds is fully applicable to that sign.

The result is that "it is possible that the essential features of a sign may be covered by one or more grounds of refusal set out under Article 3(1)(e) of Directive 2008/95. However, in such a case, registration may be refused only where at least one of those grounds is fully applicable to the sign at issue ... The public interest objective underlying the application of the three grounds for refusal of registration set out in Article 3(1)(e) of Directive 2008/95 precludes refusal of registration where none of those three grounds is fully applicable." (paras 48 and 49)

It follows that "the answer to the second question referred is that Article 3(1)(e) of Directive 2008/95 must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue." (para 51)

Article 3(1)(e)(ii) only refers to manner in which goods function

The Court then turned to the third question and held that Article 3(1)(e)(ii) of the Trade Mark Directive, under which registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured.

Mere recognition/association not enough to prove acquired distinctiveness

Finally the Court addressed the issue of acquired distinctiveness. 

It began its analysis by recalling that the essential function of a trade mark is to "guarantee the identity of the origin of the designated goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from those which have another origin" (para 59).

If not
what else?
"Through its distinctive character," continued the Court, "a trade mark must serve to identify the goods or services covered by that mark as originating from a particular undertaking, and thus to distinguish the goods or services in question from those of other undertakings" (para 60).

Such distinctive character may be acquired through use. In this respect ‘use of the mark as a trade mark’ "must be understood as referring solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the goods or services as originating from a given undertaking" (para 63). It is "in consequence of such use, [that] the relevant class of persons actually perceive the goods or services, designated exclusively by the mark applied for, as originating from a given undertaking" (para 64).

It follows that "the fundamental condition is that, as a consequence of that use, the sign for which registration as a trade mark is sought may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking" (para 65)

The Court approved the analysis of AG Whatelet and concluded that: "although the trade mark for which registration is sought may have been used as part of a registered trade mark or in conjunction with such a mark, the fact remains that, for the purposes of the registration of the mark itself, the trade mark applicant must prove that that mark alone, as opposed to any other trade mark which may also be present, identifies the particular undertaking from which the goods originate." (para 66) 

Immediate thought

Is the one adopted by the CJEU a reliance test? Interestingly enough and similarly to the AG, the judgment - at least in its English version - refrains from using 'rely' or similar terms. 

However, unlike the AG, the CJEU does not say expressly "without any possibility of confusion", if not when discussing at the outset the main function of a trade mark.

So, the question is: has the CJEU actually answered the first question referred by Arnold J?


Aaron Wood said...

They've answered question 1 - it's reliance.

It's a pig to show in a survey without leading or inviting speculation, but I am sure it can be done. If Nestle havent already got the survey results on that basis I am pretty sure they will be on the phone asking for a pilot survey to be done, and given the recent case law I would imagine they will then go to court asking for permission to adduce further evidence, and permission to adduce a full survey along the lines of the pilot.

It has to be worth it and it is central to the case. Of course there is a major issue on the evidence in such a case.. but let's leave that to be brought out in the submissions.

It's the finding on the shape exclusions that are more beneficial.. the ECJ "gave them a break"..

Hastings Guise said...

I think there is a significant glimmer of hope here for Nestle. The Court has pulled the test back towards consumer perception as a key factor, which is a point that had been lost both in Wathelet's opinion and in the earlier UK decisions -- consumer reliance is not the same consumer perception.

The test for inherent registrability asks whether a mark can be perceived as an indication of origin and not, obviously, whether it is already being relied upon as an indication of origin. Distinctiveness, in a trade mark sense, therefore means the potential to distinguish the trade origin of goods. So the acquired distinctiveness test must address whether, through use, a mark now has that potential. This is not the same as asking whether the mark has already been relied on by consumers as an exclusive indication of origin, which would be a tougher test.

It seems to me that Nestle, by showing that over 90% of their survey sample identified the KitKat shape as originating from them, with 50% having a high degree of confidence, have already shown that consumers perceive the shape, independent of other factors, as identifying origin, even if those consumers have not yet had to rely on it in this way due to the additional branded packaging et cetera. This would arguably satisfy the Court of Justice's formulation of the test.

I guess we'll see what happens when Arnold J picks up the baton again.

Ferr said...

Now I understand my episode last week when I tried to buy a Kit Kat in the IC train in which the person at the train "café" tried to push a chocolate bar labelled "crazy".

Now, we've all seen those look-alike copies sold by low cost supermarkets. Kit Kats were constant company through college and exams - I know the thing too well. Believe me.

"Well, I really want a Kit Kat!"

"This is all we have. Take it or leave it."

I demand the right of inspection.

Hey! This is labelled Kit Kat in small letters by the side... with a small picture of the bar shape.

Now I understand, there's a survey, coming up in the next few days I'm sure. Will they interview people at the train station exit? :-)

legis said...

Interesting remarks -if this goes Nestle's way in the national proceedings then Cadbury should appeal or argue for a re-referral.It seems clear to some of us reading this judgment for the interpetation of the Directive that this shape mark should not be protected, by definition and as as a result there is no room allowed under acquired distinctiveness through use, if one fails at the first hurdle.Article 3(1) (e) does not apply to shape marks. This is precisely why the Court re-arranged the order of the questions and the answer to the Second Question makes this clear (and that is also already a finding of the national court anyway as the shape results from the nature of the goods themselves. The test of acquired distinctiveness through use should not even arise here now. See para 39. Btw this ruling will equally apply to the CTM system and outside the UK in other MS, there are many chocolates marketed in the same shape and where no one has ever heard of KitKat but they have heard of their own beloved brand e.g. Leo (look it up and see how it is marketed outside the UK). In some MS -it is true that KitKat is known.Given the parlous state of the case law on what is part of the Union for the CTM system, it would be most unfortunate for this mark to be upheld by the national judge.

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