1. This request for a preliminary ruling concerns the interpretation of Article 3(1)(b) and (e)(i) and (ii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25).
2. The request has been made in proceedings between Société des Produits Nestlé SA (‘Nestlé’) and Cadbury UK Ltd (‘Cadbury’) concerning the notice of opposition filed by the latter against Nestlé’s application to register as a trade mark in the United Kingdom a three-dimensional sign representing the shape of a four finger chocolate-coated wafer. Legal context EU law
3. Directive 2008/95 repealed and replaced First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1).
4. Recital 1 in the preamble to Directive 2008/95 states: ‘The content of ... Directive [89/104] has been amended ... In the interests of clarity and rationality the said Directive should be codified.’
5. Under Article 2 of Directive 2008/95, ‘[a] trade mark may consist of any signs capable of being represented graphically ..., provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings’.
6. Article 3 of Directive 2008/95, entitled ‘Grounds for refusal or invalidity’, which reproduces, without any substantial amendments, the contents of Article 3 of Directive 89/104, provides as follows: ‘1. The following shall not be registered or, if registered, shall be liable to be declared invalid: … (b) trade marks which are devoid of any distinctive character; ... (e) signs which consist exclusively of: (i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; (iii)\tthe shape which gives substantial value to the goods; ... 3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration. …’ United Kingdom law
7. According to Section 3(1) of the Trade Marks Act 1994, trade marks which are devoid of any distinctive character are not to be registered unless, before the date of application for registration, they have in fact acquired a distinctive character as a result of the use made of them.
8. Under Section 3(2) of that act, a sign is not to be registered as a trade mark if it consists exclusively of the shape which results from the nature of the goods themselves or of the shape of goods which is necessary to obtain a technical result. The dispute in the main proceedings and the questions referred for a preliminary ruling
9. The product at issue in the main proceedings was placed on the market in the United Kingdom in 1935 by Rowntree & Co Ltd, under the name ‘Rowntree’s Chocolate Crisp’. In 1937, the name of the product was changed to ‘Kit Kat Chocolate Crisp’, and then shortened to ‘Kit Kat’. In 1988, that company, whose new trading name was Rowntree plc, was acquired by Nestlé.
10. For a long period, the product was sold in two layers of packaging, the inner layer being silver foil and the outer layer being printed paper with a red and white logo bearing the words ‘Kit Kat’, but the current packaging consists of a single layer bearing that same logo. The logo’s appearance has evolved over time, but has not changed greatly.
11. The basic shape of the product has remained almost entirely unchanged since 1935; only its size has been altered slightly. The current appearance of the product without its packaging is shown below: >image>12
12. It should be noted that each finger is embossed with the words ‘Kit Kat’ and with sections of the oval shape which form part of the logo.
13. On 8 July 2010, Nestlé filed an application for registration of the three-dimensional sign graphically represented below (‘the trade mark at issue’) as a trade mark in the United Kingdom: >image>13
14. The trade mark at issue therefore differs from the actual shape of the product in that it omits the embossed words ‘Kit Kat’.
15. The application was made in respect of the following goods in class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended: ‘Chocolate; chocolate confectionery; chocolate products; confectionery; chocolate-based preparations; bakery goods; pastries; biscuits; biscuits having chocolate coating; chocolate coated wafer biscuits; cakes; cookies; wafers’.
16. The Trade Marks Registry of the United Kingdom Intellectual Property Office accepted the application and it was published for the purposes of opposition. The view was taken that, even though the trade mark at issue had no inherent distinctive character, the trade mark applicant had shown that it had acquired distinctive character following the use made of it.
17. On 28 January 2011, Cadbury filed a notice of opposition to the application for registration putting forward various pleas, in particular a plea alleging that registration should be refused on the basis of the provisions of the Trade Marks Act 1994 which transpose Article 3(1)(b), Article 3(1)(e)(i) and (ii) and Article 3(3) of Directive 2008/95.
18. By decision of 20 June 2013, the examiner of the United Kingdom Intellectual Property Office found that the trade mark at issue was devoid of inherent distinctive character and that it had not acquired such a character following the use which had been made of it.
19. The examiner found that the shape in respect of which registration was sought has three features: - the basic rectangular slab shape; - the presence, position and depth of the grooves running along the length of the bar, and - the number of grooves, which, together with the width of the bar, determine the number of ‘fingers’.
20. The examiner took the view that the first of those features is a shape which results from the nature of the goods themselves and cannot, therefore, be registered, except in respect of ‘cakes’ and ‘pastries’, for which the shape of the trade mark departs significantly from norms of the sector. Since the other two features are necessary to obtain a technical result, he rejected the application for registration as to the remainder.
21. On 18 July 2013, Nestlé appealed against that decision to the High Court of Justice of England & Wales, Chancery Division, Intellectual Property (United Kingdom), challenging the conclusion that the trade mark at issue had not acquired distinctive character through the use made of it prior to the relevant date. Moreover, Nestlé claims that the trade mark at issue does not consist exclusively of either the shape which results from the nature of the goods themselves, or the shape which is necessary to obtain a technical result.
22. By a cross-appeal filed on the same day, Cadbury challenged the decision of 20 June 2013 in so far as that court found that the trade mark at issue had inherent distinctive character in respect of cakes and pastries and that it did not consist exclusively of either the shape resulting from the nature of the goods themselves or the shape necessary to obtain a technical result.
23. The High Court of Justice of England & Wales, Chancery Division, Intellectual Property, takes the view, first of all, that the examiner should not have made a distinction between, on the one hand, cakes and pastries and, on the other, all the other goods in class 30 of the Nice Agreement, either in relation to the proof of distinctive character of the trade mark at issue or to the applicability of Article 3(1)(e)(i) and (ii) of Directive 2008/95.
24. 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.
25. Finally, so far as concerns the shape resulting from the nature of the goods themselves and the shape necessary to obtain a technical result, the referring court points out that there is little case-law relating to Article 3(1)(e)(i) and (ii) of Directive 2008/95.
26. In those circumstances, the High Court of Justice of England & Wales, Chancery Division, Intellectual Property, decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling: ‘(1) 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? (2) Where a shape consists of 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, is registration of that shape as a trade mark precluded by Article 3(1)(e)(i) and/or (ii) of Directive 2008/95 ...? (3) Should Article 3(1)(e)(ii) of Directive 2008/95 ... be interpreted as precluding registration of shapes which are necessary to obtain a technical result with regard to the manner in which the goods are manufactured as opposed to the manner in which the goods function?’ The application for the oral part of the procedure to be reopened
27. By letter of 26 June 2015, lodged at the Court Registry on 30 June 2015, Nestlé applied for the reopening of the oral part of the procedure, which had been closed on 11 June 2015 following the delivery of the Advocate General’s Opinion.
28. In support of that application, Nestlé submits, in particular, that since the Advocate General’s Opinion does not give an adequate answer to the first question, the referring court would not be able to adopt a position on that question.
29. Nestlé also claims that the Advocate General’s Opinion is based on a misinterpretation of its written observations.
30. It is important to recall that, under Article 83 of the Rules of Procedure, the Court may at any time, after hearing the Advocate General, order the reopening of the oral part of the procedure, in particular where it considers that it lacks sufficient information, where a party has, after the close of that part of the procedure, submitted a new fact which is of such a nature as to be a decisive factor for the decision of the Court, or where the case must be decided on the basis of an argument which has not been debated between the parties or the persons referred to in Article 23 of the Statute of the Court of Justice of the European Union (see judgment in Commission v Parker-Hannifin , C‑434/13 P, EU:C:2014:2456, paragraph 27 and the case-law cited therein).
31. In the present case, the Court is of the opinion, after hearing the Advocate General, that it has sufficient information to make a decision, that there is no new fact which is of such a nature as to be a decisive factor for that decision and that it is not necessary for the present case to be decided on the basis of arguments which have not been debated between the parties.
32. In addition, pursuant to the second paragraph of Article 252 TFEU, it is the duty of the Advocate General, acting with complete impartiality and independence, to make, in open court, reasoned submissions on cases which, in accordance with the Statute of the Court of Justice, require the Advocate General’s involvement. However, the Court is bound neither by the Advocate General’s Opinion nor by the reasoning on which it is based (see judgment in Commission v Parker-Hannifin , C‑434/13 P, EU:C:2014:2456, paragraph 29 and the case-law cited therein).
33. The application for the oral procedure to be reopened must therefore be dismissed. Consideration of the questions referred Preliminary observations
34. It must first be observed that the request for a preliminary ruling concerns the interpretation of Directive 2008/95.
35. As is apparent from the judgment in Oberbank (C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 31), Directive 2008/95 merely codified Directive 89/104 in such a way that, in relation to the equivalent provisions of Directive 89/104, the provisions of Directive 2008/95 at issue in the present case were not substantively amended as regards their wording, context or purpose. The references to the case-law relating to Directive 89/104 are therefore still relevant for the purposes of the present case.
36. Secondly, under Article 2 of Directive 2008/95, a trade mark may in principle consist of a sign representing the shape of goods provided that such a sign is capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of other undertakings.
37. Article 3(1)(e) of Directive 2008/95 explicitly singles out certain signs consisting of the shape of the goods by listing the specific grounds for refusing their registration, namely where those signs consist exclusively of the shape which results from the nature of the goods themselves, of the shape of goods which is necessary to obtain a technical result, or of the shape which gives substantial value to the goods.
38. Since Article 3(1)(e) of Directive 2008/95 is a preliminary obstacle that may prevent a sign consisting exclusively of the shape of goods from being registered, it follows that if one of the three criteria listed in that provision is satisfied, that sign cannot be registered as a trade mark (see, to that effect, judgments in Philips , C‑299/99, EU:C:2002:377, paragraph 76, and Linde and Others , C‑53/01 to C‑55/01, EU:C:2003:206, paragraph 44).
39. Moreover, a sign which is refused registration under Article 3(1)(e) of Directive 2008/95 can never acquire a distinctive character for the purposes of Article 3(3) thereof by the use made of it (see, to that effect, judgments in Philips , C‑299/99, EU:C:2002:377, paragraph 75, and Linde and Others , C‑53/01 to C‑55/01, EU:C:2003:206, paragraph 44).
40. Consequently, in the context of an application for registration of a sign consisting exclusively of the shape of goods, it must first be ascertained that there is no obstacle under Article 3(1)(e) of Directive 2008/95 which may preclude registration, before going on to analyse, as appropriate, whether the sign at issue might have acquired a distinctive character within the meaning of Article 3(3) of that directive.
41. Thus, if the logic and sequence adopted by the European Union in its drafting of Article 3 of Directive 2008/95 are to be followed, it is necessary to change the order in which the questions referred are to be examined, first analysing the second and third questions, relating to the interpretation of Article 3(1)(e) of Directive 2008/95, and then examining the first question, concerning Article 3(3) of that directive. The second question
42. By its second question the referring court asks, in essence, whether Article 3(1)(e) of Directive 2008/95 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.
43. It must be recalled at the outset that the various grounds for refusal of registration listed in Article 3 of Directive 2008/95 must be interpreted in the light of the public interest underlying each of them (see, to that effect, judgments in Windsurfing Chiemsee , C‑108/97 and C‑109/97, EU:C:1999:230, paragraphs 25 to 27, and Philips , C‑299/99, EU:C:2002:377, paragraph 77).
44. The rationale of the grounds for refusal of registration laid down in Article 3(1)(e) of Directive 2008/95 is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of goods which a user is likely to seek in the goods of competitors (see, to that effect, judgments in Philips , C‑299/99, EU:C:2002:377, paragraph 78, and Hauck , C‑205/13, EU:C:2014:2233, paragraph 18).
45. The aim is to prevent the exclusive and permanent right conferred by a trade mark from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods (see, to that effect, judgment in Hauck , C‑205/13, EU:C:2014:2233, paragraph 19, and, in relation to Article 7(1)(e) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), that provision being essentially identical to Article 3(1)(e) of Directive 2008/95, the judgment in Lego Juris v OHIM , C‑48/09 P, EU:C:2010:516, paragraph 45).
46. As regards whether the separate grounds for refusal may be applied concurrently, the Court has stated that it is clear from the wording of Article 3(1)(e) of Directive 2008/95 that the three grounds for refusal of registration operate independently of one another, that is to say, each of them must be applied independently of the others (see, to that effect, judgment in Hauck , C‑205/13, EU:C:2014:2233, paragraph 39).
47. The Court has therefore concluded that if any one of the criteria listed in that provision is satisfied, a sign consisting exclusively of the shape of goods cannot be registered as a trade mark. It is irrelevant whether the sign in question could be denied registration on the basis of a number of grounds for refusal so long as any one of those grounds is fully applicable to that sign (see, to that effect, judgment in Hauck , C‑205/13, EU:C:2014:2233, paragraphs 40 and 41).
48. Accordingly, it is possible that the essential features of a sign may be covered by one or more grounds of refusal set out under Article 3(1)(e) of Directive 2008/95. However, in such a case, registration may be refused only where at least one of those grounds is fully applicable to the sign at issue.
49. 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 precludes refusal of registration where none of those three grounds is fully applicable (judgment in Hauck , C‑205/13, EU:C:2014:2233, paragraph 42).
50. 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, as mentioned in paragraphs 43 to 45 above.
51. Having regard to all the foregoing considerations, the answer to the second question referred is that Article 3(1)(e) of Directive 2008/95 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. The third question
52. By its third question the referring court asks, in essence, whether Article 3(1)(e)(ii) of Directive 2008/95, 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 or whether it also applies to the manner in which they are manufactured.
53. It must be observed in this connection that the wording of that provision refers expressly to the shape of goods which is necessary to obtain a ‘technical result’, without mentioning the process for manufacturing those goods.
54. If that provision is to be interpreted literally, the ground for refusal provided for therein is restricted to the manner in which the goods function, since the technical result constitutes the outcome of a particular method of manufacturing the shape in question.
55. That interpretation is confirmed by the objective of Article 3(1)(e)(ii) of Directive 2008/95, which consists, as is apparent from the case-law cited in paragraph 44 above, 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.
56. Moreover, it follows from the case-law that 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, to that effect, judgment in Philips , C‑299/99, EU:C:2002:377, paragraph 83).
57. It follows from the foregoing that the answer to the third question is that Article 3(1)(e)(ii) of Directive 2008/95, 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. The first question
58. 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.
59. It must be recalled at the outset in this connection that the essential function of a trade mark is to guarantee the identity of the origin of the designated goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from those which have another origin (judgment in Philips , C‑299/99, EU:C:2002:377, paragraph 30).
60. Through its distinctive character, a trade mark must serve to identify the goods or services covered by that mark as originating from a particular undertaking, and thus to distinguish the goods or services in question from those of other undertakings (see, to that effect, judgments in Windsurfing Chiemsee , C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 46; Philips , C‑299/99, EU:C:2002:377, paragraph 35, and Oberbank , C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 38).
61. That distinctive character must be assessed in relation, on the one hand, to the goods or services covered by that mark and, on the other, to the presumed expectations of the relevant class of persons, that is to say, an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (see, to that effect, judgments in Koninklijke KPN Nederland , C‑363/99, EU:C:2004:86, paragraph 34 and the case-law cited therein; Nestlé , C‑353/03, EU:C:2005:432, paragraph 25, and Oberbank , C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 39).
62. A sign’s distinctive character, which thus constitutes one of the general conditions to be met before that sign can be registered as a trade mark, may be intrinsic, as provided for in Article 3(1)(b) of Directive 2008/95, or may have been acquired by the use made of that sign, as provided for in Article 3(3) of that directive.
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. Costs
68. Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.