Why are some chocolate shapes, and shapes of other candy, protected as trademarks and other shapes are not? The question comes to mind after reading the decision of 12 December 2012 whereby the Board of Appeal of the E.U. Office for Harmonization in the Internal Market (OHIM) conferred trademark protection on Nestle’s KitKat trapezoid bar:
Also in 2012, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (TTAB) allowed registration of the product configuration for Hershey chocolates:
In contrast, the then-Court of First Instance endorsed in 2009 OHIM’s refusal to register the following configuration of the Mars chocolate as Community trademark:
In 2005, the Intellectual Property Office (IPO) of New Zealand refused to register two KitKatmarks, including this one:
Finally, in 2009 the Australian Registrar of Trademarks, with the backing of the Federal Court of Australia, denied trademark protection to the seahorse shape of Guylian chocolates:
By and large, courts and trademark offices from various countries have followed the same line of reasoning in the attempts to decipher whether the shape of confectionary merits trademark protection. That notwithstanding, the decision-making bodies did not always reach identical conclusions. The crucial difference concerned the assessment of acquired distinctiveness and, directly related to it, the approach to the issue of applicant’s use of the shape as a trademark.
All relevant decisions examined two potential obstacles to the grant of protection: functionality and lack of distinctiveness.
The shape of a chocolate is not inherently distinctive
The key issue in the cases concerning trademark protection for chocolate shapes has concerned distinctiveness of the shape: to what extent, if any, is the shape capable of distinguishing the confectionary from the confectionary of other manufacturers. In the five cases above, courts and trademark offices found that the shape of the asserted trademark was not as such distinguishable. (However, as we shall see further below, in some cases the shape has acquired the necessary distinctiveness).
Compared to words and symbols in a trademark, shapes are poorly suited to provide distinctiveness of a product. Since the range of available shapes of a product is quite limited, devising an inherently distinctive shape is virtually impossible. As the pertinent decisions by the OHIM Board of Appeal and the Court of Justice of the European Union (CJEU) emphasize, only a mark which “departs significantly” from the basic shapes of the goods at issue may have some distinctive character (CJEU judgment Mars v. OHIM (2009), para. 28; CJEU judgment Chocoladefabriken Lindt & Sprüngli AG v. OHIM (2012), para. 42; OHIM Board of Appeal decision Société des Produits Nestlé S.A. v. Cadbury Holdings Limited (2012), para. 28). In reality, the shapes of chocolates never depart significantly from the basic form.
It is easy to agree with the CJEU that the “elongated shape is almost intrinsic to a chocolate bar and does not therefore significantly depart from the norm and customs of the relevant sector” (Mars v. OHIM, para. 31). Perhaps less obviously, the seahorse in Chocolaterie Guylian N.V. v Registrar of Trade Marks (Federal Court of Australia, 2009) and the sitting rabbit in Chocoladefabriken Lindt & Sprüngli AG v. OHIM, have also been found by the courts to be typical, because chocolate manufacturers tend to make chocolates in shapes representing animals.
… But it may acquire distinctiveness
The absence of inherent distinctiveness leaves one avenue for a company wishing to register the shape of its product as a trademark: acquired distinctiveness through use of the mark in relation to the goods for which registration is requested.
Of the five marks visually presented at the beginning of this post, only the first two – KitKat and Hershey candy bars – have been accepted as trademarks. That means that the two offices, OHIM and TTAB, were satisfied that KitKat and Hershey bars, respectively, have acquired distinctiveness as trademarks, in the sense that a significant proportion of the relevant section of the public has come to identify the candy as originating from a particular undertaking. In contrast, no such development occurred in relation to the Mars and Guylian chocolates, or at least not in the opinion of the courts which looked into the matter. KitKat candy, in fact, is on the both sides of the divide, because the New Zealand IPO – unlike OHIM – refused to register it as a trademark.
With the exception of the CJEU judgment Mars v. OHIM (2009), the decisions reviewed for the purpose of writing this post share a number of elements which favor the trademark applicants who claim acquired distinctiveness. The parties seeking trademark protection are world-known producers of chocolate. The specific products at issue have been sold extensively and the proprietors spent a fortune on advertising. Consumer recognition surveys show that almost half of all participants in the relevant territory associate the particular product with the applicant for trademark protection.
This kind of evidence has convinced OHIM’s Board of Appeal and the US TTAB that KitKat and Hershey bars, respectively, should enjoy trademark protection. The two offices ended their inquiry at that point. As for the CJEU, evidence which was received from the Mars company was insufficient to enable the Court to deduce existence of an acquired distinctiveness in a number of E.U. countries (the evidence did not include surveys, witness statements, or examples of use of the mark on packages, advertising or other promotional material).
No acquired distinctiveness in the absence of use as a trademark
The Australian Federal Court and the New Zealand’s IPO decided for other reasons to withhold trademark protection from the shapes of KitKat, i.e. Guylian, chocolate. The central issue was the nature of the use of the marks by the applicants.
According to the court and the IPO, in order to acquire distinctiveness, the mark must have been used as a trademark, i.e. as indication of commercial origin. As a general proposition, this is in line with the pronouncements of the CJEU (e.g. in Societe des produits Nestle SA v Mars UK Ltd, 2005, para. 26) and of the Board of Appeals of OHIM (KitKat decision of 12 December 2012, para. 53).
The Federal Court of Australia applied this rule to the facts in the case and concluded that “it is the ‘Guylian’ trademark, together with the ‘G’ logo, that does the work of distinguishing the goods, not the seahorse shape” (emphasis added). In other words, the ability of the significant proportion of the survey respondents to identify Guylian when they were shown the seahorse shaped chocolate was due to the use, over a long period of time, of the distinctive “Guylian” and “G” trademarks on the packaging.
In a similar way, the New Zealand IPO found that the word marks KIT KAT and HAVE A BREAK were dominant when the KitKat chocolate was being sold. The chocolate bar was being sold in a sealed foil wrapper which did not indicate the shape of the product within and did not bear a representation of the shape.
This type of analysis is entirely absent from the TTAB’s Hershey decision. The KitKat decision of the Board of Appeal of OHIM briefly states the general rule that the recognition of the product as originating from a given undertaking “must be the result of the use of the mark as a trade mark”, but the decision does not demonstrate that the significant section of the relevant public came to know the KitKat bar through use of the bar as a trademark.
Unless shape is exclusively functional, it can be a trademark
The second potential obstacle to trademark registration of chocolate shape has been the “utilitarian” functionality. Essentially utilitarian features of goods cannot be protected as trademark; in the E.U. trademark parlance, a mark cannot consist exclusively of the shape which is necessary to obtain a technical result (Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trademark, Art. 7(1)(e)(ii)). Other competitors are thus free to use these utilitarian features. The cited provision from the Council Regulation also prohibits registration of a mark which results exclusively from the nature of the goods themselves (Art. 7(1)(e)(i)).
If the asserted trademark consists only of a shape which is necessary to obtain a technical result (or which results from the nature of the goods themselves), such a mark cannot be registered. But if the mark includes non-utilitarian elements as well, registration is possible. As it turns out, the shapes proposed for trademarks of chocolate (or similar candy) include decorative or imaginative elements, too. For example, in the photo of the Mars chocolate reproduced above, the “wave features” or “arrows” on the top of the bar are merely ornamental: they do not result from the nature of the bar and they are not necessary to obtain a technical result. The seahorse shape of the Guylian chocolate is even less susceptible to a charge of utilitarian functionality.
The other form of functionality, aesthetic functionality, has received little attention in the decisions concerning chocolates and similar candies. In other words, the courts and trademark offices have not explicitly addressed whether aesthetically appealing shape was such as to give substantial value to the chocolate or related good, and whether trademark protection for the shape would hinder competition on that basis. Implicitly, i.e. by removing the whole functionality hurdle to registration, the courts and the offices have ruled out the existence of aesthetic functionality.
