Société des Produits Nestlé filed a three-dimensional class 30 trademark application in the United

Kingdom for the sign Kit katfor which it provided evidence of distinctive character having been acquired through use.


Its rival, Cadbury, opposed the registration and the examiner of the British Intellectual Property Office held that the trademark at issue had no intrinsic distinctive character and had not acquired such a character through use, and therefore rejected the registration application.


The examiner held that the shape for which registration was requested consisted of the following characteristics:

  • A basic rectangular slab shape, " resulting from the nature of the products themselves";
  • The presence, position and depth of the grooves running along the length of the bar, and the number of grooves, which, together with the width of the bar, determine the number of "fingers" that have "the shape which is necessary to obtain a technical result".

Nestlé appealed this decision. It is in this context that the High Court of Justice (England and Wales) decided to refer three preliminary questions to the Court of Justice of the European Union:


  1. 1. With regard to the acquisition of distinctive character acquired through use, must consumers recognise the shape and associate it with the product or must they identify the trademark alone as an indication of the origin of the product?


    The Court held that the fundamental condition for the acquisition of distinctive character through use, either as a part of or combined with another registered trademark, is that the trademark alone (as opposed to any other trademark that may be present) allows the relevant public to identify the designated service or product as originating from a given company.


2. The second question related to the cumulative grounds for the refusal set out in Article 3.1(e) of Directive 2008/95, i.e. when the shape results from the nature of product itself, whether it is necessary to obtain a technical result or gives substantial value to the product.

In this regard, the Court recalled that these grounds for refusal are autonomous and stated that at least one of these grounds for refusal must fully apply to the shape at issue.

According to the Court, the above-mentioned article must not be interpreted so as to refuse the registration of a trademark when each of the three grounds for refusal can only be partially verified, as this would go against the public interest objective.

3. Finally, the last question related to the refusal of a shape required to obtain a technical result, and more particularly to a consideration of the manufacturing method for the product at issue.


On this point, the Court confirmed well established case law according to which these grounds for refusal must be interpreted as referring to the manner in which the product at issue operates in light of how it is used and does not apply to the manner in which it is manufactured as "the technical result can be achieved by other shapes, and consequently by other manufacturing methods" (in this regard, see CJEU - 18 June 2002 - C-299-99, Philips).


In conclusion, to prove the acquisition of distinctive character through use of a trademark, its holder must prove that it allows for identification of the origin of the products and services it designates, and that a simple association is not sufficient.


With regard to the examination of the grounds for refusal of protection related to the shape of the product, this decision reinforces the fact that they must be interpreted with a view to public interest.


Contacts : Marion LAPERRIERE and Béatrice DAUBIN

  • Publication date: November 2015
  • By : Béatrice DAUBIN
  • IP ALERT : IP ALERT Trademarks, Designs and Models
  • Subject(s) : Trademarks
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