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 in relation to ‘cakes’ and ‘pastries’. However, in relation to the issues of acquired distinctiveness and necessity to obtain a technical result Arnold J concluded that it was necessary to seek clarification of the law from the Court of Justice of the European Union in order to determine the appeals.
Arnold J
[2014] EWHC 16 (Ch), [2014] ETMR 17, [2014] FSR 28
Bailii
England and Wales
Cited by:
Reference from – 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 . .
At Chd (1) – 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 (1) – Societe Des Produits Nestle Sa v Cadbury Uk Ltd CA 17-May-2017
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 . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 29 November 2021; Ref: scu.520826