The controversial battle between Nestlé and Cadbury
Awaiting the decision of the Court of Appeal within this month it is worth discussing the case relating the KitKat shape between Nestlé and Cadbury (now called Mondelez). The two famous manufactures have been in dispute over the registration of the shape bringing claims in several courts. The High Court of England and Wales, the Singapore Court of Appeal, and the General Court have been asked to make a decision as to whether the KitKat shape should be registered.
After a referral to the European Court of Justice Arnold J said that although the famous chocolate bar was not barred from registration by section 3(2)(b) of the 1994 UK Trade Mark Act (Article 3(1)(e)(ii) of the Trade Mark Directive), Nestlé had failed to prove the necessary distinctiveness. Specifically, although he believed that it was proven that the shape was recognised and associated with the product Nestlé had failed to prove that the public relied on it in order to recognise its origin (‘reliance test’). The same rationale was followed by the Singapore Court of Appeal in its decision on 24th of November 2016.
It is worth mentioning that the EUIPO originally had sided with Cadbury and its Board of appeal then overturned its decision and took Nestlé’s side due to evidence of acquired distinctiveness through use in fifteen Member States of the EU. However, the General Court deemed firstly, that it was necessary to prove that distinctiveness has been acquired by the relevant population and not by the general public in the EU and secondly, that further information was needed from other Member States (Belgium, Ireland, Greece and Portugal), thus the decision was for a second time overturned.
It is interesting to consider that in its decision the General Court included the UK within the territories where the chocolate bar had acquired distinctiveness; this being clearly opposite to Arnold J’s decision brings the Court of Appeal in a difficult position. It is evident that the General Court was not willing to apply the ‘reliance test’ consequently the interpretation of C-215/14 was clearly different from Arnold J’s decision, but since the court of Appeal agrees with his interpretation and the General Court’s decision is not binding to it, the ‘reliance test’ will probably be followed in the UK.
The Appeal was heard and the decision is to come out within April. As already mentioned it is highly likely that the Court of Appeal will not follow the General Court’s decision, however due to the controversy this case has caused it will not be surprising if there is a different result.