The chocolate wars continue with arch-rivals Nestle and Cadbury embroiled in another legal battle. With round 1 going to Nestle with its win in Cadbury’s bid to trade mark the colour purple, the tables have now turned, with Cadbury opposing Nestle’s application to protect the shape of the popular Kit-Kat. The case was heard before the English High Court, who took a Time Out from the decision making process and referred the matter to the European Court of Justice (CJ).
It is now up to the Smarties at the CJ to decide, in regards to registering shapes as trade marks, whether:
(1) The applicant must prove that a significant proportion of the public recognise the mark as distinctive through use or if mere recognition is sufficient; and
(2) There is an inherent distinctive character to the shape.
Additionally, an application may be precluded on the grounds the essential elements of the shape result from the nature of the goods or is a technical result. However, the law is unclear on whether the application must be invalidated based on one reason or whether it can be a combination of the two. This question has also been posed to the CJ for clarification.
When it comes to the Crunch, the decision could provide some useful guidance for Australian intellectual property law. At present, the Australian law requirement is that the trade mark in question must distinguish the goods at the date of the application, through the use made of the goods. Under Australian law, unlike the European provisions, shape marks are not expressly dealt with.
As well as being a Boost for Nestle, a decision in their favour could have some interesting implications for trade mark requirements.