Case C‑215/14

Société des Produits Nestlé SA

v

Cadbury UK Ltd

(Request for a preliminary ruling from the High Court of Justice (Chancery Division))

‛Reference for a preliminary ruling — Trade marks — Directive 2008/95/EC — Article 3(3) — Concept of ‘distinctive character acquired through use’ — Three-dimensional mark — Kit Kat four finger chocolate-coated wafer — Article 3(1)(e) — Sign which consists of both the shape which results from the nature of the goods themselves and the shape which is necessary to obtain a technical result — Manufacturing process included in the technical result’

Summary — Judgment of the Court (First Chamber), 16 September 2015

Approximation of laws — Trade marks — Directive 2008/95 — Grounds for refusal or invalidity — Sign consisting of the shape of the goods which is necessary to obtain a technical result — Concept referring to the functioning of the product and not its manufacture

Approximation of laws — Trade marks — Directive 2008/95 — Grounds for refusal or invalidity — Sign consisting both of the shape which results from the nature of the goods themselves and that necessary to obtain a technical result — Included — Condition

Article 3(1)(e) of Directive 2008/95 on trade marks must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue. An interpretation of Article 3(1)(e) of Directive 2008/95 under which registration of a mark could not be refused where, following analysis, more than one of the three grounds for refusal were found to be applicable, or vice versa, which allowed the application of that provision where each of the three grounds for refusal set out was only partially established, would clearly run counter to the public interest objective underlying the application of the three grounds for refusal of registration set out in Article 3(1)(e) of Directive 2008/95. (see paras 50, 51, operative part 1)

Article 3(1)(e)(ii) of Directive 2008/95 on trade marks, under which registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured. That interpretation follows from the very wording of that article and is confirmed by the objective of Article 3(1)(e)(ii) of Directive 2008/95, which consists in preventing a monopoly from being granted on technical solutions which a user is likely to seek in the goods of competitors. From the consumer’s perspective, the manner in which the goods function is decisive and their method of manufacture is not important. Moreover, the manufacturing method is not decisive in the context of the assessment of the essential functional characteristics of the shape of goods either. The registration of a sign consisting of a shape attributable solely to the technical result must be refused even if that technical result can be achieved by other shapes, and consequently by other manufacturing methods. (see paras 54-57, operative part 2)