Société Des Produits Nestlé SA v Cadbury UK Ltd

Recognition of a sign and association with an applicant’s goods are insufficient to establish acquired distinctive character. The applicant must show that a significant proportion of the relevant public perceives the goods as originating from a particular undertaking because of the sign itself, rather than another mark used with it.

The sign need not have been used independently. Consumer surveys are relevant but cannot alone establish acquired distinctiveness. The assessment must consider all relevant evidence, including the sign’s use, presentation, consumer reliance and competing products.

Nestlé appealed against the refusal to register the shape of its four-finger KIT KAT product for goods in Class 30, except cakes and pastries. Cadbury cross-appealed against the permission to register it for those goods.

In an earlier judgment, the court held that the sign lacked inherent distinctiveness for cakes and pastries but referred questions on acquired distinctiveness and the technical-result exclusion to the Court of Justice of the European Union. Following the CJEU’s ruling, the central issue was whether recognition and association were sufficient, or whether the sign itself had to identify the goods’ commercial origin.

1. Disposition. Nestlé’s appeal was dismissed and Cadbury’s cross-appeal was allowed.
2. Acquired distinctive character. A significant proportion of the relevant class of persons must perceive the goods as originating from a particular undertaking because of the sign in question, as opposed to another mark which may also be present. Recognition and association with the applicant’s goods are insufficient.
3. The sign need not have been used independently. The evidence must nevertheless establish that the sign alone identifies commercial origin. The competent authority may consider whether consumers would rely upon the sign as denoting origin if it were used on its own.
4. The hearing officer had applied the correct test. The survey evidence showed recognition and association with KIT KAT products, but did not establish that the shape itself exclusively designated their trade origin. Surveys cannot be the only decisive criterion. The hearing officer was entitled to consider the opaque packaging, the absence of evidence that consumers used the shape to verify authenticity, and the existence of similarly shaped products.
5. Cadbury accepted that registration was not precluded by the technical-result ground under section 3(2)(b) of the Trade Marks Act 1994, in light of the CJEU’s answers. That issue required no further determination.

1. High Court (Chancery Division): Nestlé appealed and Cadbury cross-appealed against the hearing officer’s decision. The court referred three questions to the CJEU in its earlier judgment.
2. Court of Justice of the European Union: answered the questions on acquired distinctiveness and the technical-result exclusion. The present court applied that guidance.