The United Kingdom’s recent High Court decision on whether Nestle could register Kit Kat’s ‘four-finger’ shape is consistent with earlier decisions in Australia to register non-traditional trade marks. 

The High Court in the United Kingdom, following the decision of the Court of Justice of the European Union (CJEU), found that the shape of the Kit Kat chocolate bar consisting of four fingers attached together does not have any capacity to distinguish. In addition to this, it was also decided that evidence of trade mark use provided by Nestle, including survey evidence, was not sufficient to prove that the shape has acquired the capacity to distinguish confectionery goods.

The threshold for proving that a shape has achieved the capacity to distinguish is much higher. The court said that it is not enough for the consumers to associate the shape with Nestle’s Kit Kat. Rather, what must be proven is that consumers would rely on the chocolate’s shape to know that it is a Kit Kat bar. 

In this case, the Court found that the presence of other distinctive elements in the packaging means that the chocolate’s shape does not function as a badge of origin. Rather, consumers rely on the packaging and the words Kit Kat to distinguish the chocolate from other confectionaries. It also wasn’t helpful that there are other similar-shaped chocolate bars available in the UK proving that the shape does not function as a badge of origin, but is a common shape used in the manufacture of chocolates.

Australian Shape Trade Mark Decision

This decision is similar to Australian decisions in relation to shape trade marks. In particular, the Guylian sea shell shape trade mark decision. In this case, the chocolate manufacturer fought to obtain trade mark registration for the sea shell shape of its chocolates. When the Registrar of Trade Marks refused to register, Guylian appealed to the Federal Court.

The decisions were similar in outcome and reasoning. First it was found that the sea shell shape of Guylian’s chocolates were not sufficiently distinctive to be accepted without evidence of use. When Guylian provided evidence of use, it was considered insufficient. The Court’s reasoning was also similar. It firstly noted that chocolates are malleable products which can be produced and sold in various shapes and that for a trade mark to function, it needs to be perceived as something more than just the shape of the product.

The chocolate manufacturer unsuccessfully supplied evidence of trade mark use. First, that the evidence provided demonstrated that Guylian’s sea shell chocolates were sold in packaging that contained other distinctive elements including the word Guylian and a letter. For this reason, it cannot be said that consumers solely relied on the shape to identify Guylian as the source of the chocolates.  Furthermore, other manufacturers’ use of the sea shell shape on their chocolates demonstrated the generic nature of manufacturing chocolates in that shape.

Successful Chocolate Shape Trade Marks

The above classic trade mark decisions set out the general principles to apply when considering registrability, distinctiveness and the evidence required for shape trade marks. However, this does not mean that someone cannot obtain registration for shape trade marks.

On the Australian register, the following are registered shape trade marks for chocolates:

  • Trade Mark 706789 – Toblerone – three dimensional triangles attached to each other
  • Trade Mark 783465 – Mars Sugar Australia Pty Ltd – Millennium bug trade mark
  • Trade Mark 923170 – Ferrero registration for the shape and of the Kinder Surprise Egg
  • Trade Mark 923171 – Ferrero registration for the shape of its Ferrero Rocher chocolate
  • Trade Mark 1116344 – Lindt and Sprungli’s registration for the shape of its Easter bunny chocolate.

How were these other shape trade marks registered? Well, in some cases, the trade mark application did not solely rely on the registration of the shape of the chocolates but included colour and packaging aspects. For example, the registration for Lindt’s Easter bunny chocolate shape included in its claim for registration the colour of the rabbit, being gold, and the red ribbon with the gold bell placed on the rabbit’s neck.

Notably, even when combining the shape with these other features, the trade marks office did not see these trade marks as inherently capable of distinguishing. The register accepted these trade marks only after the owners provided evidence of use that the shape has acquired, or will eventually acquire, the capacity to distinguish.

Except for the Millennium bug trade mark which was considered inherently capable of distinguishing, but only after the owners took their case all the way to the Full Federal Court. The millennium bug shape trade mark, formerly owned by Kenman Kendy Aust Pty Ltd, was found to be inherently capable of distinguishing because “an invented shape must be assessed in the same way as an invented word, and that the presumption of registrability must be applied to shape signs as it is to be applied to all other signs”.

What is the difference between the Millennium bug shape and the sea shell shape? One difference would be that the Millennium bug’s shape was seen to be an invented shape. While the shape was clearly of a bug, it is a new and vague bug shape that is not represented by a real bug in real life. On the other hand, the shape of sea shell chocolates are very clearly representative of sea shells and have become generic, particularly in light of evidence that traders other than Guylian manufacture chocolates using the same or similar sea shell shape.

Key Takeaways

The take home message from the above examples of shape trade marks highlights how difficult it is obtain trade mark registration and prove that a shape trade mark is capable of distinguishing chocolates.  If you are thinking of applying for a shape trade mark for your confectionery products, prepare yourself to receive a section 41 distinctiveness objection, and to provide substantial evidence of use demonstrating that consumers rely on the shape to identify the chocolate’s origin. Mere association of the shape to the origin is not enough.

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Questions about registering your shape trade mark? Tag us on Twitter @legalvision_au and let us know or ask our trade mark lawyers.

Raya Barcelon

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