For some
years now it has been possible to apply for registration of 3D shapes as
trademarks. The court battle between Nestlé and Cadbury over whether the
4-fingered KitKat bar could be registered as a 3D trademark illustrates some of
the difficulties.
The 5 key points:
1. Nestlé applied to register their 4-fingered
chocolate bar as a 3D trademark. Cadbury objected claiming that it lacked
essential distinctive character.
2. The case progressed to the Courts with
judgment in favour of Cadbury. Nestle appealed.
3. The Court of Appeal in England held that
the shape lacked distinctiveness which would allow a third party to rely on it
as an indicator of origin – i.e. that it would clearly be seen as having
emanated from Nestle. In other words, it was not a “badge of origin”.
4. While there have been successful
applications for registration e.g. the Coca-Cola bottle shape, the courts have
been reluctant to agree that there is essential distinctiveness without the
manufacturer’s name or brand being embossed on it - as is the case with the
KitKat 4-fingered bar.
5. This case reinforces the need for care to
be taken when creating new product design if reliance is to be had on 3D
shapes. Trademark law is there to protect brands and trade names but a monopoly
right is only granted if the legislative standards are met.
