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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Société Des Produits Nestlé SA v Cadbury UK Ltd [2016] EWHC 50 (Ch) (20 January 2016) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2016/50.html Cite as: [2016] Bus LR 354, [2016] WLR(D) 23, [2016] EWHC 50 (Ch) |
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CHANCERY DIVISION
Fetter Lane, London, EC4A 1NL |
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B e f o r e :
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SOCIÉTÉ DES PRODUITS NESTLÉ SA |
Appellant |
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- and - |
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CADBURY UK LTD |
Respondent |
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Thomas Mitcheson QC (instructed by Bristows) for the Respondent
Hearing date: 13 January 2016
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Crown Copyright ©
MR JUSTICE ARNOLD :
Introduction
The previous case law of the Court of Justice
"25. Whether inherent or acquired through use, distinctive character must be assessed in relation, on the one hand, to the goods or services in respect of which registration is applied for and, on the other, to the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (judgment in Case C-299/99 Philips [2002] ECR I-5475, paragraphs 59 and 63).
26. In regard to acquisition of distinctive character through use, the identification, by the relevant class of persons, of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark (judgment in Philips, paragraph 64).
27. In order for the latter condition, which is at issue in the dispute in the main proceedings, to be satisfied, the mark in respect of which registration is sought need not necessarily have been used independently.
28. In fact Article 3(3) of the directive contains no restriction in that regard, referring solely to the 'use which has been made' of the mark.
29. The expression 'use of the mark as a trade mark' must therefore be understood as referring solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking.
30, Yet, such identification, and thus acquisition of distinctive character, may be as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designated exclusively by the mark applied for, as originating from a given undertaking."
The question referred
"In order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of Directive 2008/95 ..., is it sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant's goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant; or must the applicant prove that a significant proportion of the relevant class of persons rely upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?"
My provisional view
"In case it assists the Court of Justice, it is my opinion that, for the reasons I explained in Vibe, the correct answer to the question is that the applicant must prove that a significant proportion of the relevant class of persons rely upon the trade mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods."
The procedure on the reference
The language regime in preliminary ruling proceedings
"The texts of documents drawn up in the language of the case or, where applicable, in another language authorised pursuant to Articles 37 or 38 of these Rules shall be authentic."
Counsel for Nestlé submitted, and I agree, that the reason for this rule is to avoid disputes arising as to what a document means as a result of language issues. It follows from Article 41 that, in the present case, it is only the texts of documents in English which are authentic. It does not necessarily follow that language issues can be ignored when trying to understand the Court of Justice's reasoning.
The translations of question 1 in the present case
"Afin d'établir qu'une marque a acquis un caractère distinctif après l'usage qui en a été fait, au sens de l'article 3, paragraphe 3, de la directive 2008/95, suffit-il que le demandeur à l'enregistrement démontre que, à la date pertinente, une proportion significative des milieux intéressés reconnaissait la marque et l'associait à ses produits, en ce sens que si ces personnes s'interrogeaient sur la personne commercialisant les produits revêtus de cette marque, elles identifiaient le demandeur? Ou le demandeur doit-il démontrer qu'une proportion significative des milieux intéressés estimait que la marque (par opposition à toute autre marque pouvant également être présente) indiquait l'origine des produits?"
"Reicht es aus, wenn der Anmelder einer Marke, um darzutun, dass sie infolge ihrer Benutzung Unterscheidungskraft im Sinne von Art. 3 Abs. 3 der Richtlinie 2008/95 erworben hat, nachweist, dass zum maßgeblichen Zeitpunkt ein erheblicher Teil der beteiligten Verkehrskreise die Marke erkennt und in dem Sinne mit den Waren des Anmelders verbindet, dass sie, wenn sie angeben sollten, wer die mit der Marke gekennzeichneten Waren vermarktet, den Anmelder nennen würden, oder muss er nachweisen, dass ein erheblicher Teil der beteiligten Verkehrskreise die Marke (und keine anderen etwa vorhandenen Marken) als Hinweis auf die Herkunft der Waren wahrnimmt?"
The written observations
The oral hearing
Nestlé's application to re-open the oral procedure
The Opinion of the Advocate General
"Secondly, as regards the question of whether the trade mark had acquired distinctive character through the use made of it prior to the relevant date, the referring court, after reviewing the relevant case-law, seeks to ascertain whether, in order to establish that a trade mark has acquired distinctive character, it is sufficient that, at the relevant date, a significant proportion of the relevant class of persons recognises the trade mark and associates it with the applicant's goods. The referring court takes the view that the applicant must prove that a significant proportion of the relevant class of persons regards the trade mark (as opposed to any other trade mark which may also be present) as indicating the origin of the goods."
"33. By its first question, the referring court asks the Court whether, in order to prove that a trade mark has acquired that 'distinctive character following the use that had been made of it', within the meaning of Article 3(3) of the Trade Marks Directive, it is sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognises the mark and associates it with the applicant's goods in the sense that if they were to consider who marketed goods bearing that mark, they would identify the applicant, or whether the applicant must prove that a significant proportion of the relevant class of persons relies upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods.
34. According to the High Court of Justice, the question reflects continuing uncertainty on the part of the English courts, even though they have already made two requests to the Court for a preliminary ruling on this subject.
35. This case therefore presents the Court with an opportunity to determine whether merely proving that the shape of goods which have been placed on the market is recognised by a substantial proportion of the relevant public as designating the goods of a particular trader is sufficient in order to establish that a trade mark has acquired distinctive character following the use made of it, or whether it must be shown that the shape is used and relied upon by the relevant public as a guarantee of trade origin."
"The trade mark not only enables its proprietor to distinguish himself from his competitors, but also provides a guarantee to the consumer or end-user that all the goods or services covered by the sign constituting the trade mark have the same trade origin. (11)"
"It is clear from that case-law that it is not sufficient for the applicant for registration to prove that the average consumer of the category of goods or services at issue, who is reasonably well informed and reasonably observant and circumspect, recognises the trade mark and associates it with his goods. He must prove that, for that average consumer, who is reasonably well informed and reasonably observant and circumspect, the trade mark in respect of which registration is sought (as opposed to any other trade marks which may also be present) indicates the exclusive origin of the goods concerned, without any possibility of confusion."
"47. However, in the judgment in Nestlé (C-353/03, EU:C:2005:432), the Court was careful to specify that, in any event, 'it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designated exclusively by the mark applied for, as originating from a given undertaking'.
48. In other words, although the trade mark for which registration is sought may have acquired distinctive character when used in conjunction with another trade mark, it must, at a given time, in order to be eligible for protection as a trade mark in its own right, be capable of fulfilling the function of identifying the origin of the goods by itself.
49. That evidentiary issue was very well explained, in a situation concerning a composite mark, by Advocate General Kokott in her Opinion in Nestlé (C-353/03, EU:C:2005:61), where it is stated that 'it is not sufficient for the purposes of demonstrating acquisition of distinctive character, as a result of use as a part of a composite mark, to provide documentary evidence of use of the overall mark. Rather it must also be demonstrated that the relevant class of persons understand the element in question, if used separately, to designate a product as originating from a specific undertaking, thus distinguishing it from products of other undertakings'.
50. As the Court expressly stated in its interpretation of Article 7(3) of Regulation No 40/94, 'regardless of whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark, the fundamental condition is that, as a consequence of that use, the sign for which registration as a trade mark is sought [and that sign alone, I would add, for the sake of completeness] may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking'.
51. That interpretation is confirmed by the clarification provided by the Court in the same case, according to which a registered trade mark that is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term 'genuine use'.
52. In the context of the main proceedings, the question at issue is, therefore, whether the shape for which Nestlé seeks registration as a trade mark, when used independently of its packaging or of any reference to the term 'Kit Kat', serves to identify the product, to the exclusion of any other trade mark which may also be present, as being, without any possibility of confusion, the Kit Kat wafer bar sold by Nestlé (21).
53. It is for the competent authority to determine whether the relevant class of persons, or at least a significant proportion thereof, identifies, because of the trade mark in question, the product or service as originating from a particular undertaking, in the sense of having the same commercial origin.(22)"
"Although the term 'Kit Kat' is embossed on each of the fingers which make up the 'Kit Kat' biscuit, the shape in respect of which registration is sought is, in itself, devoid of any lettering and could, potentially, be identified by the relevant public as relating to products of other undertakings. In that case, it would not have the required distinctive character. That is a matter for the referring court to determine."
"…. should be that it is not sufficient for the applicant for registration to prove that the relevant class of persons recognises the trade mark in respect of which registration is sought and associates it with the applicant's goods or services. He must prove that only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services concerned."
The judgment of the CJEU
"Secondly, as regards the question of whether the trade mark at issue had acquired distinctive character through the use made of it prior to the relevant date, the referring court, after reviewing the relevant case-law, seeks to ascertain whether, in order to establish that a trade mark has acquired distinctive character, it is sufficient that, at the relevant date, a significant proportion of the relevant class of persons recognise the trade mark and associate it with the trade mark applicant's goods. The referring court takes the view that the trade mark applicant must prove that a significant proportion of the relevant class of persons regard the trade mark (as opposed to any other trade mark which may also be present) as indicating the origin of the goods"
"By its first question the referring court asks, in essence, whether an applicant to register a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3) of Directive 2008/95 must prove that the relevant class of persons perceive the goods or services designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular company, or whether it is sufficient for that applicant to prove that a significant proportion of the relevant class of persons recognise that mark and associate it with the applicant's goods."
"63. So far as, specifically, the acquisition of distinctive character in accordance with Article 3(3) of Directive 2008/95 is concerned, the expression 'use of the mark as a trade mark' must be understood as referring solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the goods or services as originating from a given undertaking (judgment in Nestlé, C-353/03, EU:C:2005:432, paragraph 29).
64. Admittedly, the Court has acknowledged that such identification, and thus acquisition of distinctive character, may be as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. However, it has added that in both cases it is important that, in consequence of such use, the relevant class of persons actually perceive the goods or services, designated exclusively by the mark applied for, as originating from a given undertaking (judgment in Nestlé, C-353/03, EU:C:2005:432, paragraph 30, and, in connection with Regulation No 40/94, Article 7(3) of which corresponds, in essence, to Article 3(3) of Directive 2008/95, the judgment in Colloseum Holding, C-12/12, EU:C:2013:253, paragraph 27).
65. Therefore, regardless of whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark, the fundamental condition is that, as a consequence of that use, the sign for which registration as a trade mark is sought may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking (see, to that effect, judgment in Colloseum Holding, C-12/12, EU:C:2013:253, paragraph 28).
66. It must therefore be concluded, as indicated in points 48 to 52 of the Advocate General's Opinion, that although the trade mark for which registration is sought may have been used as part of a registered trade mark or in conjunction with such a mark, the fact remains that, for the purposes of the registration of the mark itself, the trade mark applicant must prove that that mark alone, as opposed to any other trade mark which may also be present, identifies the particular undertaking from which the goods originate.
67. Having regard to those considerations, the answer to the first question is that, in order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3) of Directive 2008/95, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company."
Analysis of the CJEU's answer
"It is for the competent authority to determine whether the relevant class of persons, or at least a significant proportion thereof, identifies, because of the trade mark in question, the product or service as originating from a particular undertaking, in the sense of having the same commercial origin."
"[The court's answer] … imports the concept of reliance, because there is reliance by the average consumer where, as a result of the mark, they perceive the goods as originating from a particular undertaking. It is not reliance in the sense that they had in the past gone out and made purchasing decisions on that basis, but it is reliance in the sense that they perceive it as a trade mark. To perceive it as a trade mark is to perceive it as identifying the undertaking from which the goods originate. That of course is the critical reliance for trade mark purposes. … [What is required is] something which people will perceive in a trade mark way. Implicit in that is that they will rely upon it if presented with it in those circumstances where they may wish to buy the product or even avoid the product."
Application to the present case
"In my view, the applicant has shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery (only), but not that consumers have come to rely on the shape to identify the origin of the goods. This is because:
i) There is no evidence that the shape of the product has featured in the applicant's promotions for the goods for many years prior to the date of the application;
ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods;
iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended trade source.
In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails."
"50. … The hearing officer's finding of fact only establishes that a significant proportion of the relevant class of persons recognise the shape constituted by the Trade Mark and associate it with goods manufactured by Nestlé in the sense I have explained in paragraph 45 above. In my judgment the hearing officer was correct to conclude that it had not been shown such persons have come to rely on the Trade Mark to identify the origin of the goods for the reasons he gave at [109].
51. Before proceeding further, it is perhaps worth elaborating a little on the hearing officer's third reason. As counsel for Cadbury accepted, a sign may come to be relied upon by consumers as indicating the origin of goods, and thus acquire a distinctive character, even though the sign is not visible to the consumer at the time of purchase. A very old example of this is the stamp frequently placed by wine producers on the corks in bottles of wine. Both because the cork was traditionally covered by lead foil and (where applicable) because of the dark glass of the bottle, the stamp was not visible to consumers at the point of sale, but only when the cork was extracted from the bottle (or at least when the foil was removed, if the bottle was made from clear glass). The point of the stamp was to confirm the authenticity of the product. In other words, it was an early form of anti-counterfeiting measure. As such, it was recognised by the English courts in the nineteenth century that such stamps functioned as trade marks and were distinctive of wine produced by the relevant producer: see the cases discussed in Prescott, 'Trade marks invisible at point of sale: some corking cases' [1990] EIPR 241. As the hearing officer rightly held, however, there is no evidence, and it is inherently unlikely, that consumers of four-finger Kit Kats rely upon the shape of the product to confirm the authenticity of the goods. Indeed, I would go further: the fact that Nestlé ensures that each finger is embossed with the words Kit Kat as shown in paragraph 4 above amounts to a clear recognition that consumers do not rely on the shape in this way, rather what they rely upon is the trade mark Kit Kat."
"…even if a consumer survey may be one of the factors to be taken into account when assessing whether such a mark has acquired distinctive character through use, the results of a consumer survey cannot be the only decisive criteria to support the conclusion that a distinctive character has been acquired through use".
Although this statement was made with reference to a contourless colour mark, there is no reason to think that it is not equally applicable in this context.
Conclusion