The CJEU’s September decision in the long-running dispute between Nestlé and Cadbury brought good news for trademark owners seeking to protect 3D shapes but bad news for those that need to show their marks have acquired distinctiveness. Mary Guinness of Mishcon de Reya reports.
In 2010 Nestlé applied to register the shape of its well-known Kit Kat chocolate bar as a trademark.
This application was opposed by Cadbury, leading to a decision by the UK Intellectual Property Office (IPO) in 2013 that the trademark could not be registered on the basis that (a) the mark had not acquired the necessary distinctive character (in relation to a vast majority of the goods covered by the application); (b) the mark consisted exclusively of the shape which results from the nature of the goods themselves; and (c) the mark consisted exclusively of the shape of the goods which is necessary to obtain a technical result.
Nestlé appealed to the English High Court, where Mr Justice Arnold sought further clarification on the law from the Court of Justice of the European Union (CJEU) before coming to his decision. Two of his questions related to whether shape marks can be registered, while the other involved the standard of evidence required to establish acquired distinctiveness.
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