SANTE® bar shape - accepted in New Zealand

Monday, July 6, 2015

The Advocate General of the European Court of Justice has handed down his decision on whether the shape of Nestlé’s KIT KAT four finger bar shape qualifies for trade mark registration in the United Kingdom. The AG’s view was that the shape did not qualify for registration (see here for our article on this decision and its international context)

While the Nestle case is the centre of attention we’ve had our own shape mark case for a one finger chocolate bar bubbling away in New Zealand, culminating in a decision in favour of registration in March.

By way of background, J H Whittaker & Son (Whittaker’s) filed a trade mark application for the shape of its SANTE® bar back in 2010. The application was accepted but registration was opposed by Empire Confectionary Limited.

Similar to the questions in Nestlé’s case, the Hearings Officer had to address the following questions:

  • Is the sign a trade mark?
  • If so, does it have a distinctive character
  • If it does not have a distinctive character, has it acquired that character by use?

Taking each in turn, the Hearing Officer found:

  • The SANTE shape was not simply a generic expression for chocolate bars, and therefore the sign was a trade mark;
  • On balance, the SANTE shape fell marginally short of the distinctive character required for registration minus acquired distinctiveness through use;
  • The SANTE bar shape had acquired distinctiveness through use.

One of the key factors in the SANTE bar case is that Whittaker’s had for many years (55 years) sold the SANTE bar in an unwrapped form and, in addition, when the bar was sold wrapped the wrapping ‘hugged’ the shape of the bar.

The form of sale and of wrapping for the SANTE bar therefore differs from that in Nestlé’s KIT KAT case, where one of the hurdles they faced was showing that people recognised the bar shape itself as a trade mark, even though the product was wrapped and bore significant branding across the packaging.

What the SANTE bar case confirms again is that it is possible to register shapes as trade marks. Though, as mentioned in our earlier article, significant evidence that the shape has become distinctive through long and exclusive use will be needed.

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