Distinctive Character through Use not established
Nestle had sought to register as a trade mark, a three dimensional representation of their four fingered Kit Kat chocolate biscuit. Cadbury objected, and the hearing officer rejected the claim saying that the mark had not acquired a distinctive character within the Directive. The question of what was required to establish distinctive character had been referred to the ECJ, and answered. On return to the High Court, the rejection of the claim to distinctiveness was confirmed.
Held: The appeal failed. When a putative mark did not of itself have distinctiveness, the test for acquisition of distinctive character was now resolved. The court must be shown that a signicant section of the class of consumers who might rely on it would associate it with the product,though that may also be created by association with additional marks. The hearing officer had been entitled to conclude that the survey presented did not show that a distinctiveness of its own had been generated.
Judges:
Sir Geoffrey Vos Ch, Kitchin, Floyd LJJ
Citations:
[2017] EWCA Civ 358, [2017] WLR(D) 331
Links:
Statutes:
Parliament and Council Directive 2008/95/EC 3(3)
Jurisdiction:
England and Wales
Citing:
At ChD (1) – Societe Des Produits Nestle Sa v Cadbury Uk Ltd ChD 17-Jan-2014
The court was asked ‘In what circumstances can a trader secure a perpetual monopoly in the shape of a product by registering it as a trade mark? ‘
Held: the hearing officer was incorrect to find that the Trade Mark was inherently distinctive . .
At ECJ – Societe Des Produits Nestle v Cadbury UK Ltd ECJ 16-Sep-2015
ECJ (Judgment) Reference for a preliminary ruling – Trade marks – Directive 2008/95/EC – Article 3(3) – Concept of ‘distinctive character acquired through use’ – Three-dimensional mark – Kit Kat four finger . .
Appeal from – Societe Des Produits Nestle Sa v Cadbury UK Ltd ChD 20-Jan-2016
The parties disputed the registration as a trade mark of three dimensional signs representing specific shapes of chocolate biscuit products.
Held: The objection by Cadbury’s succeeded. . .
At ChD (2) – Societe Des Produits Nestle Sa v Cadbury UK Ltd ChD 20-Jan-2016
The parties disputed the registration as a trade mark of three dimensional signs representing specific shapes of chocolate biscuit products.
Held: The objection by Cadbury’s succeeded. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, European
Updated: 26 March 2022; Ref: scu.583969
