It is a basic and fundamental stipulation in UK trade mark law that, for successfully filing trade mark applications, the symbols in question have to be unique. But how high exactly is the bar set for uniqueness? The answer to this question is made clearer by a recent legal clash between chocolate makers Nestlé and Cadbury.

An indistinctive symbol made distinctive?

The legal tussle between the two companies had lasted for several years and finally concluded this year, when the European Court of Justice ruled that the shape of a KitKat is not, by itself, sufficiently distinctive for consumers to associate it with the legendary chocolate-and-wafer bar. Though many of us are familiar with the standard four-finger shape of a KitKat, the Luxembourg-based CJEU decided that it remained inapplicable for EU-recognised trade mark registration.

The whole saga began in July 2010, when Nestlé attempted to register the symbol of the four-finger KitKat as a trade mark in the UK. The application was accepted by the UK Intellectual Property Office’s Trade Marks Registry, on the basis that, despite the trade mark having “no inherent distinctive character”, the symbol had “acquired distinctive character following the use made of it”.

However, Cadbury contested this judgement, referring to key provisions of the Trade Marks Act 1994. As a result, the UK Intellectual Property Office decided that the trade mark indeed had not acquired distinctive character in the manner previously described. The High Court later put forward that the symbol also had character relating to cakes and pastries, therefore diminishing its distinctiveness.

So, what can be learned from all of this?

If you are considering applying for a trade mark for your business, look closely at the symbol that you are seeking trade mark status for – and, crucially, whether that symbol alone, not when in conjunction with other symbols associated with your business, could be easily associated with your business by your customers.

Robert Buchan, a partner in Brodies’ intellectual property team, has observed the Court of Justice’s judgement in this case and noted that, compared to brand names, logos or packaging, it is “much more challenging to prove that shapes are perceived by consumers as a guarantee of origin of the products, as generally we as consumers don’t rely on shapes alone to identify who is selling the goods.” Knowing this can certainly help us at Trade Mark Consultants to help you in dealing with trade mark disputes.