Member Article

As anyone who’s interested in trade mark law knows, it is possible to protect product shapes through trade mark registrations, but it isn’t easy. In some countries, it’s particularly difficult, as two recent cases show.

Vespa Let's start with the positive news. Piaggio recently secured an important victory in its home country, with an Italian court ruling that a three-dimensional trade mark registration for the shape of the famous Vespa scooter is valid. Piaggio had sued various companies for infringement of the registration, and the companies responded by applying to cancel the trade mark registration.

The Italian court upheld the trade mark registration, noting that it isn't contrary to any of the prohibitions set out in the law: the shape of the Vespa scooter is not imposed by the nature of the product; the shape isn’t necessary to obtain a technical result; and the shape does not add substantial value to the goods. In addition, the court accepted that the survey evidence, which showed a very high degree of recognition by the public, did establish that the shape has become distinctive of the product. So the registration was valid and there was trade mark infringement.

Incidentally, in addition to trade mark protection, the court held that the shape of the Vespa scooter is protected under copyright law, being an industrial design product that has a creative character and artistic value.

Kit Kat Now for the less positive news. It’s been widely reported that Nestlé has again failed in its attempt to obtain a trade mark registration in the UK for the four-finger shape of its Kit Kat chocolate. There is considerable background to the matter. The application was refused in the UK many years ago and the matter was referred to the Court of Justice of the European Union ("CJEU"). The CJEU then delivered its ruling, which is basically an opinion on the legal issues.

The CJEU said that a trade mark applicant must show that, as a result of use, the trade mark identifies the goods as coming from the company. It went on to say that, not only must the use be "trade mark use"; in other words, use indicating provenance, but it must be use of the actual trade mark that the company is trying to register. It specifically made the point that the company cannot submit evidence of use of the trade mark that it wants to register in conjunction with another trade mark, in this case, of course, the name Kit Kat.

The matter then went back to the UK court, so that it could apply the legal reasoning of the CJEU to the facts. The judge interpreted the ruling to mean that the trade mark owner must establish that a significant proportion of those people who buy the product perceive the goods as originating from the trade mark owner because of the shape, and not because of any other trade mark that might have been used, such as the name Kit Kat. The judge concluded that, despite use of the four-finger shape in the UK going back to 1935, Nestlé had failed to prove that consumers rely on the shape to designate the origin of the goods. The trade mark application therefore had to fail.

The Court of Appeal ("CA") handed down its judgment a couple of weeks ago. The CA agreed that the evidence did not establish that consumers recognise or rely on the shape to determine trade origin. It made the point that the four-finger shape has no inherent distinctiveness, and that the product is sold under a name that is inherently distinctive, namely Kit Kat. It noted that Nestlé’s advertising has not been directed specifically at the product shape. What’s clear from this decision is that UK courts will scrutinise evidence very closely, and require evidence that is very specific to the product shape.

Nestlé has, unsurprisingly, expressed its unhappiness with this decision, and it is possible that it will file a further appeal to the Supreme Court. In a press statement, Nestlé mentioned that it has registrations for the four-finger shape in various countries, including South Africa.

So, what is the situation in South Africa? Product shape trade mark registration isn’t easy, but it certainly isn’t as difficult as it is in the UK. It’s safe to say that in South Africa, the authorities are unlikely to scrutinise evidence as closely as the UK courts do. Many readers will know that the four-finger shape of the Kit Kat bar has been considered by South Africa’s Supreme Court of Appeal ("SCA"), which found that the trade mark registration is valid. Dealing with the issue of distinctiveness, the SCA found that the four-finger shape has become distinctive through use in South Africa going back many years. The court certainly drew no distinction between mere recognition and acceptance as a trade mark. The court also didn't seem to take into account the fact that the shape may have been used in conjunction with the word trade mark Kit Kat. For more history of this saga, see:

           · Kit Kat shape: is it game over?

           · the Kit Kat shape – another perspective

           · Kit Kat – the final word

           · SA court fails to give Nestlé a break

           · Kit Kat and other product shapes

           · another chapter in the Kit Kat shape saga

Although trade mark law is becoming increasingly standardised, it is starting to look as if product shape trade marks may be one area where it depends very much on where the application is filed.

Gaelyn Scott