The shape of chocolate... as a trade mark

The recent decision of the European Court of Justice in Societe des produits Nestle v Mondelez UK Holdings & Services [2018] EUECJ C-84/17P (Nestle), effectively denying pan-European registration of the Kit-Kat 4-fingered shape trade mark, has highlighted the need for shape trade marks to reach the distinctiveness threshold in order to achieve registration.

The same trade mark had been found not to be registrable by the Commissioner of Trade Marks in New Zealand under our previous Act, the Trade Marks Act 1953 as the definition of “trade mark” did not include shape.

Now in New Zealand, the Trade Marks Act 2002 clearly provides for the registration of shape trade marks. The Act specifically provides for their registration by virtue of inclusion of “shape” in the definition of a sign in section 5:

sign includes—
(a) a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, or word

Despite this, shape trade marks are not easily registered, as foreshadowed in the New Zealand Kit-Kat decision, typically receiving objection or opposition based on a lack of distinctiveness where they consist of shape alone. In many instances, an Applicant attempting to register a shape as a trade mark will attempt to rely on the provision in section 18(2) of the Act which provides for registration where a trade mark has acquired distinctive character by use. Alternatively, embellishment of a shape trade mark with decoration or branding will often add to the inherent distinctiveness of the bare shape to help justify registration.

Fredco v Miller

The leading case in New Zealand regarding registrability of shape trade marks is the decision of the New Zealand Court of Appeal in Fredco Trading Ltd v Miller [2006] NZCA 151 (Fredco).

In Fredco, the Court found a trade mark for the shape of a kiwifruit vine tie registrable on the basis of acquired distinctiveness, supported by significant evidence of use, including evidence that consumers recognised the vine tie’s origin by means of its shape.


New Zealand Trade Mark No. 661428

Although the mark was a simple shape (as above) and only differed slightly from the vine ties of the opponent, the evidence proved that the distinct shape was enough for consumers to recognise the brand, and therefore distinguish the origin of the goods in the marketplace.

The Court of Appeal set out the approach for considering the registrability of shape trade marks as follows:
- Is the sign a trade mark (section 18(1)(a))?
- If so, does it have a distinctive character (that is, is the trade mark caught by section 18(1)(b), (c), or (d))?
- If it does not have a distinctive character, has it acquired that character by use?

Everybody loves chocolate!

In analogy with Nestle and the many other overseas decisions regarding the Kit-Kat shape trade mark, New Zealand has a home-grown equivalent, which is a good example regarding the registrability of shape trade marks in New Zealand.

In a decision from an Assistant Commissioner of Trade Marks (J H Whittaker & Sons Limited v Empire Confectionery Limited [2015] NZIPOTM 4), the shape of the Whittakers Sante chocolate bar, “a simple three-dimensional shape of a rectangular finger with two tapered ends”, was held to be registrable as a shape trade mark despite opposition from a third party.

New Zealand Trade Mark No. 819009


Applying the inquiry from Fredco above, the sign was found to be a trade mark, but to marginally lack the inherent distinctiveness required under section 18(1)(b) on the basis of the shape alone, the Assistant Commissioner applying the well-known test that “other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.” However, following the submission of evidence by the Applicant, Whittakers, the mark was held to have overcome the threshold of acquired distinctiveness through use.

As the shape of the Sante bar was on the cusp on inherent distinctiveness, the Assistant Commissioner emphasised that the use required to be shown by Whittakers was less than what would be required for a trade mark with a lower level of inherent distinctiveness.

In considering whether the extent of use was sufficient, the Assistant Commissioner considered the factors listed by the Court of Appeal in Fredco, namely:
- The market share held by the mark;
- How intensive, geographically widespread and long-standing use of the mark has been;
- The amount invested in promoting the mark;
- The proportion of the relevant class of persons who, because of the mark, identify the goods as originating from the applicant; and
- Statements from industry, chambers of commerce, or other trade and professional associations.

In this case, market share, geographical coverage and evidence from industry were the key elements of evidence provided by Whittakers to show acquired distinctiveness. It is well established that any combination of the above factors from Fredco may contribute to showing acquired distinctiveness dependent on the circumstances, and they are not all required. Additionally, this case is a good illustration that a combination of inherent and acquired distinctiveness can combine to provide registrability.

Snapshot of the New Zealand register for shape trade marks

A cursory review of the New Zealand trade marks register, limited to shape/3D marks, shows that at August, 2018, there are 306 active shape/3D trade marks registrations in New Zealand. Of these, many accepted for registration under the Trade Marks Act 2002 indicate that the mark is registered on the basis of acquired distinctiveness under section 18(2).

Conclusion

As the cases and snapshot of the register evidence, shape trade marks can be and are registered in New Zealand. However, as inherent distinctiveness can be difficult to show for a shape trade mark, in many cases, acquired distinctiveness by use must be shown in order to register a shape as a trade mark.

Therefore, if you or your business wants to register a shape as a trade mark, unless the shape is clearly distinctive at face value, it may be prudent to have evidence of use showing the distinctiveness and reputation of the trade mark before making an application.

Depending on the product in question, and assuming that you have not yet used the shape, it may be more appropriate to seek to register the shape as a registered design and gain monopoly protection for up to 15 years. Once there has been sufficient use of the shape the time is right to apply for registration of the shape as a trade mark.

If you are interested in applying to register a trade mark, or for any other intellectual property matters, please contact us.

Jesse Strafford - August 2018


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