Form of the product and acquired distinctiveness: possible registration of the KIT KAT trademark

The court
of Justice of the European Union issued on September 16 the
expected sentence –case C-215/14- which resolves the preliminary question
raised by the High Court of Justice of the United Kingdom regarding the
registrability as a trademark of the shape of Kit Kat chocolates:

 

Nestle had
applied for registration of the trademark before the British Trademark Office, the
which, considering the opposition raised by Cadbury, denied it on the understanding that
the acquisition of distinctive character had not been sufficiently proven
by the brand. Furthermore, he considered that the form for which it had been
The registration requested had three characteristics:

 

 

La
The first of these characteristics, according to the British Office, constituted a
form that resulted from the very nature of the products requested (with
exception of cakes and pastries), and the other two were necessary
to obtain a technical result.

 

 

Appealed
this decision before the High Court of Justice, it considered that there was no
sufficient jurisprudence of the Court of Justice on the problems
raised and filed a request for a preliminary ruling. In its ruling, the Court
of Justice reverses the order of the three questions raised and examines in
firstly that relating to the possible cumulative application of the prohibition
registration of signs consisting of the shape of the product when that
form is imposed by the nature of the product and when it is necessary to
obtain a technical result, considering that a sign that incurs this
prohibition can never acquire distinctive character through use.

 

To this
In this regard, the CJ reiterates the doctrine established in the recent Hauck ruling,
C ‑ 205/13, EU:C:2014:2233 (the case of the Tripp-Trapp chair), in the sense of
that the three particular causes of prohibition of registration of forms of
The products are autonomous and can be applied independently.. Por
Therefore, in the opinion of the Court, it is irrelevant the fact that a form can
simultaneously incur several of the grounds for denial, siendo
sufficient to deny registration if only one of these causes applies
fully to the form in question.

 

Just like
explains the Advocate General in paragraphs 65 and 66 of his Conclusions out of 11
June 2015, what the CJ excluded in the Hauck ruling was the possibility
to apply combined the
three different causes of denial, but not the one of applying them in a accumulated, provided that at least one
of them affect fully to the sign
in question.

 

La
The third of the questions raised by the High Court was related to
la prohibition of registration of the forms necessary to obtain a
technical result and requested clarification on whether this prohibition refers
solely to the way the product works or whether it also applies to the way
in which it is manufactured.

 

The T.J.
considers that the relevant point of view in this regard is that of the consumer,
for whom the functionalities of the product are decisive, but the
manufacturing modalities. Therefore, he interprets that the ban is not
applies to the way the product is manufactured.

 

By
Lastly, the CJ analyzes the first preliminary question raised. In reality, your
This approach is more a practice of the British courts than of the
from the rest of the EU countries. The reason is that in the United Kingdom the courts,
When examining the distinctiveness of a trademark acquired through use,
They consider that it is not enough for the owner to prove that a proportion
significant number of people from the interested sectors recognize the brand and the
associates with its products (as Nestlé had done in the case examined
by providing a market study). On the contrary, they also demand that
the owner demonstrates that those people rely on that brand as an indicator
of the business origin of the product compared to other brands that could also
be present.

 

 

This
additional requirement or, if you will, higher standard of distinctiveness, is logically
more difficult to meet, particularly for consistent brands
in the form of the product that, in practically all cases, is
presented on the market accompanied by word or mixed trademarks. So
This also happens with Kit Kat, which has always been marketed in a package
with a characteristic logo and in which the words themselves Kit Kat They are engraved on all four
bars that make up the chocolate bar:

To
To resolve this issue, the CJ relies on the criteria followed in the Nestlé ruling,
C ‑ 353/03, EU:C:2005:432, according to which for a brand to acquire character
distinctive through use it is necessary that the mark be used
isolated, but it may be a use as part of a trademark
registered or in combination with another trademark. However, as he did in the later
Colloseum Holding ruling, C‑12/12,
EU:C:2013:253, points out that The essential requirement is that, as a consequence
of this use, the sign whose registration is requested as a trademark may indicate to
interested sectors that the products to which it refers come from a
specific company.

 

For
Well, in the ruling before us the CJ clarifies - following the criteria of the
Advocate General - that, to comply with this requirement, the applicant for the
trademark registration must provide proof that said trademark alone,
isolated from the rest of the elements that, in its use, may have
accompanying it, serves to indicate the business origin of the product.

 

 

In
practice, The most direct way to comply with this requirement will be through
of a survey in which respondents are shown the marked product
exclusively with the sign that is intended to be registered, without the rest of
additional elements with those usually presented on the market.
This is what both Nestlé did in the national procedure that has given rise to
this sentence as Levi Strauss in the corresponding to the sentence
Colloseum.