KIT KAT-reep is vooral een technisch ontwerp
UK Trade Mark Registry 20 juni 2013, O-257-13, oppositienr. 101495 (KIT KAT)
Vormmerk. Oppositie na IEF 12171. Marktonderzoek (90% herkenning). Behalve voor 'cakes and pastries' wordt de inschrijving geweigerd. De aanwezigheid van groeven is om een technisch resultaat te bereiken, namelijk om het product te breken voor consumptie. Het is geen esthetisch, maar vooral een technisch ontwerp. Het feit dat het product meestal in een verpakking wordt verkocht zodanig dat de vorm niet kan worden waargenomen, dat het product is ontworpen om gebroken te worden en de benadrukking van 'the break' in de marketing van Nestlé, draagt hieraan bij.
26. According to Mr Malivoire’s statement, 90% (426) of these respondents mentioned KIT KAT in their answers (...)
28. In cross examination Mr Malivoire was challenged by Mr Mitcheson as to whether the second survey was conducted at a sufficient number of locations. The survey was conducted at 18 locations whereas in a recent passing off case13 Mr Malivoire had given evidence that 29-40 locations were required for a reliable street survey. Mr Malivoire explained that the reference to 29-40 was an error. He had meant to say 20-40 locations. Basically he recommended 25 respondents per location and therefore if the total survey sample was 500-1000 (which would be typical) that means 20-40 locations. The 18 locations in this survey were not far off the recommended 20 for a survey of 500(ish) people. I am satisfied with Mr Malivoire’s explanation. I am also satisfied that the second survey was large enough to provide meaningful results. It should be remembered that the object of the survey was to establish whether a “significant proportion” of the relevant public recognise the opposed mark as distinctive of the goods of a particular undertaking. One is not therefore looking for the sort of precision that is necessary in order to accurately predict the outcome of an election. Indeed the Court of Justice of the European Union (“CJEU”) has cautioned against reliance solely on general abstract data such as predetermined percentages.
75. The presence of breaking grooves is necessary to achieve a technical result: to permit the product to be broken up for consumption. There is a choice as to whether to run the grooves horizontally across the width of the bar or vertically down its length or (probably not in the case of wafer bars) both.
85. (...) However, the shape at issue is not an aesthetic design. For the reasons given above, it is a functional one. That is consistent with:
i) The fact that the goods have usually been sold wrapped in such a way that the shape cannot be seen until after purchase;
ii) The product is designed to be broken up and consumed;
iii) The emphasis given in the applicant’s marketing to the breakability of the fingers of the bar.
109 (...) 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 Néstle), 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.
110. Subsequent to the hearing I was informed that the Second Board of Appeal at OHIM had reversed an earlier decision of the Cancellation division to cancel the mark at issue in these proceedings, which is also registered as a CTM under No.2632529. I have carefully considered the decision of the Board of Appeal, but I regret that I must differ from their conclusions on distinctiveness and functionality. In this respect I note that:
i) The CTM was not registered for chocolate, chocolate products, chocolate confectionery or wafers (although it was registered for biscuits);
ii) It is not clear that the Board of Appeal had the expert evidence that has been filed in these proceedings:
iii) The Board of Appeal did not have the benefit of hearing cross examination of experts on their evidence about the functionality and manufacturing considerations related to various aspects of the shape.
Conclusion
111. The application is refused, except in relation to cakes and pastries.
