SOCIÉTÉ DES PRODUITS NESTLÉ SA v CADBURY UK LTD

In what circumstances can a trader secure a perpetual monopoly in the shape of a product by registering it as a trade mark? That is the question raised by this appeal by Société des Produits Nestlé SA (“Nestlé”) and cross-appeal by Cadbury UK Ltd (“Cadbury”) from a decision of Allan James on behalf of the Registrar of Trade Marks dated 20 June 2013 (O/257/13). The shape in issue is essentially that of the well-known Kit Kat four-finger chocolate-coated wafer bar. It is clear that in principle European trade mark law permits the shape of a product to be registered as a trade mark. Surprisingly, however, certain aspects of the relevant law remain unclear. For the reasons explained below, I have concluded that it is necessary to seek clarification of the law from the Court of Justice of the European Union in order to determine the appeals.

The four-finger product which is now sold by Nestlé under the name Kit Kat was first sold in the UK 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. After World War II, the name was shortened to Kit Kat. In 1988 what was by then Rowntree plc was acquired by Nestlé.

The product was for many years sold in two layers of packaging: an inner silver foil and an outer paper cover printed with a red-and-white logo featuring the words Kit Kat on the front. More recently, the product has been sold in a single layer of plastic packaging featuring the same logo. The design of the logo has evolved over the years without changing dramatically. The current form of the logo is reproduced below:

The basic shape of the product has altered very little since 1935, although its size has been slightly changed from time to time. The current appearance of the unwrapped product is shown below:

It can be seen that each finger is embossed with the words Kit Kat together with segments of the oval that forms part of the logo. From at least 1959 if not earlier to at least 1964 if not later each finger was embossed with the word Rowntree rather than the words Kit Kat. It is not clear from the evidence in this case when this was changed.

In addition to the four-finger version of Kit Kat, a two-finger version has also been sold for many years. More recently other variants have also been sold. For present purposes these other versions of the product can be ignored.

On 8 July 2010 Nestlé applied to register the three-dimensional sign graphically represented below (“the Trade Mark”) as a United Kingdom trade mark:

The application was made in respect of the following goods in class 30:

“Chocolate; chocolate confectionery; chocolate products; confectionery; chocolate-based preparations; bakery goods; pastries; biscuits; biscuits having a chocolate coating; chocolate coated wafer biscuits; cakes; cookies; wafers.”

The application was accepted by the Trade Marks Registry and published for opposition on the basis that, although the Trade Mark was devoid of inherent distinctive character, the applicant had shown that the Trade Mark had acquired a distinctive character as a result of the use made of it prior to the application date.

Cadbury opposed the application on various grounds, in particular that registration should be refused under sections 3(1)(b), 3(2)(a) and 3(2)(b) of the Trade Marks Act 1994. In response to Cadbury’s reliance upon section 3(1)(b), Nestlé relied upon the proviso to section 3(1). These provisions give effect to Articles 3(1)(b), 3(1)(e)(i) and (ii) and 3(3) of European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) (“the Directive”) and correspond to Articles 7(1)(b), 7(1)(e)(i) and (ii) and 7(3) of Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark (“the Regulation”).

Cadbury adduced written evidence from the following witnesses: Mark Hodgin (Senior Trade Mark Counsel for Cadbury Holdings Ltd), Paul Walsh (a partner in Cadbury’s solicitors) and Mark Robertson (a retired Senior Project Engineer formerly employed by Cadbury). Nestlé adduced written evidence from the following witnesses: Dale Carter (Intellectual Property Advisor for Nestlé UK Ltd), Sarah Gorjup (Homestock Brand Manager for Nestlé UK), Alex Hutchinson (Heritage Assistant for Nestlé UK), Clive Barnes (Assistant Vice-President of Nestlé’s Research and Development Division) and Philip Malivoire (Divisional Director of GfK NOP, a market research agency). The hearing officer had the advantage of hearing Messrs Hodgin, Robertson, Barnes and Malivoire cross-examined on their written evidence.

Articles 3(1)(b), 3(1)(e)(i) and (ii) and 3(3) of the Directive provide as follows:

“Article 3

Grounds for refusal or invalidity

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;

…

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. …”

The hearing officer held that the Trade Mark was devoid of inherent distinctive character, and had not acquired a distinctive character, in relation to all goods covered by the application except “cakes” and “pastries”. He also held that registration of the Trade Mark in relation to those goods was precluded on the ground that the Trade Mark consisted exclusively of the shape which is necessary to obtain a technical result. In relation to “cakes” and “pastries”, however, he held that the Trade Mark was inherently distinctive and registration was not precluded. The hearing officer’s reasoning may be summarised as follows.

Having directed himself in accordance with the judgment of the Court of Justice in Case C-136/02 Mag Instrument Inc v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2004] ECR I-9165 at [29]-[31], the hearing officer found at [92] that “third party two finger versions of the shape applied for were on the UK market in a significant way” and that “other products consisting essentially of a number of joined chocolate fingers separated by breaking grooves had also been present on the UK market” prior to the relevant date. He also found at [93] that the average consumer of chocolate products would see the shape “as representing no more than four conjoined chocolate fingers separated by grooves to make it easy to break the individual fingers apart for the purposes of consumption”.

On this basis he concluded as follows:

“94.

In my judgment, the shape is therefore within the norms and customs of the sector and/or is a mere variant on common shapes for chocolate bars and biscuits, i.e. rectangular bars with breaking grooves resulting in individual pieces or ‘fingers’. The shape is not such as to permit average consumers to distinguish the product concerned from those of other undertakings. The shape mark is therefore prima facie devoid of any distinctive character.

95.

Chocolate bars and biscuits are covered by all the following terms.

‘Chocolate; chocolate confectionery; chocolate products; confectionery; chocolate-based preparations; biscuits; biscuits having a chocolate coating; chocolate coated wafer biscuits; bakery products; cookies; wafers.’

96.

The shape does not look similar to any cake or pastry I have seen. There is no evidence to assist me one way or the other, but I find that the shape is outside the norms and customs of the sector and would be capable of distinguishing the trade origin of cakes or pastries, whether as the highly unusual shape of the goods or otherwise.”

As the hearing officer recorded at [11]-[13] and [100]-[102], Nestlé adduced evidence that Kit Kat was the sixth, third and third best-selling chocolate product in the UK in 2005, 2006 and 2007 with sales of £25-33 million per annum. Nestlé spent between £3 million and £11 million per annum promoting Kit Kat in the UK between 1996 and 2007, most of which was directed at the four-finger version. Although some examples of advertising from 2003 and 2007 were provided, these did not show the shape of the product. Between £850,000 and £4.4 million was spent promoting the product in the years 2008, 2009 and 2010. No examples of such promotion were provided so it was not possible to establish whether this included promoting the product by reference to its shape. Sales of over £40 million per annum were achieved in each of these years, representing 1-2% of the UK chocolate market during this period.

Although Nestlé produced examples of some historical advertisements from the 1930s to 1950s which showed the shape of the product and of television advertising from 1959-1964 which also showed the shape of the product, there was no evidence of any advertising showing the shape of the product later than 1964.

Nestlé adduced evidence that from February 2010 multipacks of the four-finger product (representing about 25% of the sales of the four-finger product) were sold in packaging on which the Trade Mark was represented in two-dimensional form. Apart from this, there was no evidence of two-dimensional use of the Trade Mark to promote the product prior to the relevant date.

As the hearing officer discussed at [18]-[38], Mr Malivoire gave evidence about two surveys which his company conducted on behalf of Nestlé.

The first survey was part of an omnibus survey conducted in 2007. 1030 respondents were interviewed in their own homes and asked successive questions about a number of issues of interest to various commercial undertakings. In the relevant section of the survey respondents were shown the representation of the Trade Mark and asked the following questions:

“I would now like to show you a sweet or biscuit product. Could you please tell me what this product makes you think of?

And still looking at this picture, can you think of anything else it makes you think of?”

Less than 10% of respondents failed to mention Kit Kat in response to these questions and 80% of respondents mentioned only Kit Kat.

The hearing officer concluded at [22]-[23] that the first survey did not comply with the criteria for the validity of survey evidence laid down in Imperial Group plc v Philip Morris Ltd [1984] RPC 293, and in particular the criterion that the questions must not be leading nor should they lead the person answering into a field of speculation he would never have embarked upon had the question not been put, and thus was not reliable.

The second survey was a street survey. 500 respondents making up a broadly representative sample of the public were interviewed in 18 locations around the UK in March and April 2012. The respondents were approached in the street and those that agreed to take part were asked a couple of screening questions to ensure that they were resident in the UK and that they (or close friends etc.) were not employed in certain professions, including the legal profession, market research or manufacture or sale of cars, confectionery or cosmetics. Respondents were then shown a card with the representation of the Trade Mark on it and asked:

“Please look at this picture. Please let me know when you are ready to continue.

(1)

What, if anything, can you tell me about this?”

Those respondents who mentioned “sweet” or “chocolate” without mentioning a brand name were then asked:

“(2)

And what else, if anything can you tell me about it?”

Those respondents who had mentioned a brand name were asked:

“(3 ) You mentioned (brand name). Why was that?”

These respondents were then asked:

“What else, if anything?”

Those respondents who had not mentioned shape up until this point were then asked:

“(4)

What, if anything, can you tell me about the appearance of this?”

The last question was:

“(5)

Finally, is there anything else that you would like to say about this?”

The questionnaires from one of the locations in the survey were excluded because Mr Malivoire was not satisfied with the quality of the recording of the answers. That left 473 completed questionnaires. Not content with relying upon Mr Malivoire’s assessment, the hearing officer went though all 473 questionnaires himself.

At [34] the hearing officer agreed with Mr Malivoire that it was significant that 426 (90%) of these respondents mentioned Kit Kat in their answers, and only a few mentioned any other brand of chocolate. He then proceeded to consider whether the respondents’ answers “indicated that the respondent thought that the shape shown to them was a KIT KAT or whether the shape just suggested or reminded them of the KIT KAT shape”. His assessment of this at [38] was as follows:

“Ultimately, it is not possible to tell from a series of short answers exactly how many of the respondents were sure that the shape shown to them was a KIT KAT, but going through the answers I think it is safe to conclude that at least half the respondents gave answers which probably meant that they thought that the shape shown to them was the product known as KIT KAT. That is not really surprising given that the product has been sold in the same shape in the UK in substantial volumes since the 1930s. Most people will therefore have eaten one at one time or another. For that reason I do not think that there is anything in [counsel for Cadbury]’s further criticism that the second survey was conducted around 20 months after the relevant date.”

As he summarised it at [103]:

“… the survey evidence described above shows that at least half the people surveyed thought that the picture shown to them depicted a KIT KAT product. … ”

Having directed himself in accordance with the judgments of the Court of Justice in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber [1999] ECR I-2779 at [51]-[53], Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2002] ECR I-5475 at [103] and Case C-353/03 Société des Produits Nestlé SA v Mars UK Ltd [2005] ECR I-6135 at [26]-[30] and my decision when sitting as the Appointed Person in Vibe Technologies Ltd’s Application [2009] ETMR 12 at [90]-[91], the hearing officer concluded that Nestlé had failed to establish that the Trade Mark had acquired a distinctive character through use for reasons which he expressed at [109] as follows:

“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 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.”

The hearing officer directed himself in accordance with the Court of Justice’s judgments in Philips v Remington (cited above) at [78]-[84] and Case C-48/09 P Lego Juris A/S v Office for Harmonisation in the Internal Market [2010] ECR I-8403 at [51]-[52] and with the decisions of the Court of Appeal in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809 at 820 and Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2006] EWCA Civ 16, [2006] FSR 30 at [51]-[52].

The hearing officer identified the essential features of the shape which constitutes the Trade Mark at [66] as follows:

“In my view, the essential features of the shape at issue are:

i)

The rectangular ‘slab’ shape of the mark as it appears on the form of application including the relative proportions of length, width and depth;

ii)

The presence, position and depth of the breaking grooves arranged along the length of the bar, which effectively divide the bar into detachable ‘fingers’;

iii)

The number of such grooves, which together with the width of the bar determine the number of ‘fingers’.”

The hearing officer held that feature (i) resulted from the nature of the goods themselves in the case of moulded chocolate bars or moulded chocolate biscuits for reasons which he expressed as follows:

“70.

… there is nothing in the wording of s.3(2)(a) which indicates that only shapes for natural products fall within its scope. … In my view, the provision potentially covers shapes which result from nature of the way that man-made goods are made and sold. Further, it is now established that the words ‘the shape’ in sub-sections (b) and (c) of s.3(2) cover each and every shape which is necessary to achieve a technical result or which adds substantial value to the goods because of its aesthetic appeal. By parity of reasoning it appears to me that s.3(2)(a) should likewise be taken to cover any shape which results from the nature of the goods themselves, whether or not there are other shapes in use for those goods (whilst accepting that a real diversity of shapes is likely to mean that there are no shapes that result from the nature of the goods themselves).

…

72.

I consider that the basically rectangular ‘slab’ shape of goods represented by the mark is a shape which results from the nature of a bar of moulded chocolate (which may, or may not, contain wafer, or some other filing) or of a moulded chocolate biscuit sold in bar form. It is obviously an easy and cheap way to provide the consumer with a given amount of chocolate product in a shape which presents less difficulty to mould, wrap and stock than other fancier shapes. That is no doubt why most moulded chocolate bars take the same basically rectangular ‘slab’ shape.

73.

The fact that some moulded and other enrobed chocolate products do not take the shape of a rectangular slab does not mean that this cannot be the basic shape which results from the nature of moulded chocolate bars or chocolate biscuits moulded in bar form. Rather what it means is that some other moulded chocolate bars do not consist of the shape which results from the nature of the goods themselves.”

The hearing officer held that features (ii) and (iii) were necessary to obtain a technical result with respect to moulded chocolate bars and moulded chocolate biscuits for reasons which he expressed as follows:

“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.

76.

The depth of the grooves is a compromise between the minimum depth required at the point where the fingers are joined in order for the product to retain structural integrity in manufacture and transit, and the maximum permissible depth before consumers would have difficulty in breaking the bar up cleanly into regular shaped and conveniently consumable fingers. A greater depth of groove is likely to be necessary in order to break the fingers cleanly where (as in the mark) the fingers run vertically along the whole length of the bar (and therefore result in a longer breaking joint) compared to what would be required if the grooves ran horizontally along the shorter width of the bar.

77.

Once the other parameters are settled, the number of ‘fingers’ is determined by the size of the chosen portion. The number of fingers is no more arbitrary than the length of a Lego brick. … Similarly, supplying bars with varying amounts of chocolate/chocolate wafer (and therefore more or fewer fingers) meets consumers needs for more or less of the product depending on their appetite at the time of purchase. Or to put it another way, once it has been decided to supply the product in the form of conjoined breakable fingers, the number of fingers simply reflects the portion size.

78.

The evidence indicates that the angle of the sides of the product, and of the breaking grooves, is constrained by the method of manufacture. The moulding process requires a minimum release angle of 8-10 degrees. The angle shown in the mark is 14 degrees, which Mr Barnes accepted would look similar to consumers.

79.

I accept that the angle of the sides of the fingers could be made larger resulting in fingers with a noticeably more squat appearance, although still trapezoidal in cross section. At most, this means that the use of angles of specifically 14 degrees is a minor arbitrary element of the overall shape. Whilst the angle of the sides and grooves may make a minor contribution to the overall shape of the product, it is not something which would catch consumers’ attention as a feature of the shape, let alone an essential feature of the shape.”

In the light of these findings, the hearing officer concluded that the Trade Mark was precluded from registration for all the goods applied for, other than “cakes” and “pastries”, for the following reasons:

“81.

… I conclude that:

i)

The basic rectangular ‘slab’ shape represented by the mark is a shape which results from the nature of moulded chocolate bars or moulded chocolate biscuits sold in bar form;

ii)

The presence of breaking grooves is a feature which is necessary to achieve a technical result;

iii)

An angle of more than 8-10 degrees for the sides of the product, and for the breaking grooves, results from the nature of moulded chocolate products and the depth of the grooves is necessary to achieve a technical result;

iv)

The number of breaking grooves and fingers is determined by the desired portion size.

82.

The breaking grooves achieve only a technical result whether they run vertically (as per the mark) or horizontally, so neither choice qualifies as an essential non-functional feature for the purposes of s.3(2)(b). If it were otherwise, shapes representing both options could be registered on the basis neither represented the only available option. The same would apply if the angle of the sides of the product and of the breaking grooves were made wider. The shape of the wider grooves would perform the same technical function as those in the mark and (absent a non-functional essential feature) the shape of the goods would therefore still be caught be s.3(2)(b).

83.

I therefore conclude that the presence and depth of the breaking grooves is necessary to achieve a technical result and the other recognisable features of the shape result from the very nature of a moulded chocolate bar. This can be tested by imagining what the shape would look like if the breaking grooves were removed. It would look to consumers like a rectangular slab of chocolate. None of the essential features of the shape are arbitrary, decorative or imaginative.

…

86.

In assessing the true scope of s.3(2)(b) it is necessary to have regard to the purpose of s.3(2). I remind myself that the CJEU has described that purpose as being:

‘.. to preclude the registration of shapes whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trade mark right would limit the possibility of competitors supplying a product incorporating such a function or at least limit their freedom of choice in regard to the technical solution they wish to adopt in order to incorporate such a function in their product.’

87.

That purpose would be undermined if the presence in a sign of basic features which result from the nature of the goods themselves was sufficient to defeat an objection that the essential features of the sign consist exclusively of a shape which is necessary to achieve a technical result.

…

89.

For the reasons given above, I find that the mark applied for is excluded from registration by s.3(2)(b) of the Act for all the goods applied for, except cakes and pastries. There is therefore no need to give any further consideration to the s.3(2)(a) ground.”

It can be seen that, formally, the hearing officer’s ultimate conclusion was that registration of the Trade Mark would be contrary to section 3(2)(b) (Article 3(1)(e)(ii) of the Directive), but that his reasoning was that one of the three essential features he had identified was precluded from registration by section 3(2)(a) (Article 3(1)(e)(i) of the Directive) and the other two were precluded from registration by section 3(2)(b).

The hearing officer nevertheless concluded that the objections under sections 3(2)(a) and (b) did not apply in relation to “cakes” and “pastries” because, as he put it at [71], “the shape does not look like one that could be used for a cake or pastry”.

Nestlé appeals against the hearing officer’s decision to uphold the opposition for all goods except “cakes” and “pastries”. Cadbury cross-appeals against the hearing officer’s decision to reject the opposition and allow the application to proceed to registration in respect of “cakes” and “pastries”.

Although the hearing officer heard oral evidence, there is no challenge by either side to his findings of fact. In those circumstances, it is common ground that the correct approach to an appeal of this kind is that stated by Robert Walker LJ (as he then was) in REEF Trade Mark [2002] EWCA Civ 763, [2003] RPC 5 at [28]:

“In such circumstances an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.”

Nestlé does not challenge the hearing officer’s conclusion that the Trade Mark is devoid of inherent distinctive character in relation to all the goods covered by the application save for “cakes” and “pastries”. Cadbury challenges the hearing officer’s conclusion that the Trade Mark inherently possesses distinctive character in relation to “cakes” and “pastries”.

Counsel for Cadbury submitted that the hearing officer had made two errors. First, the hearing officer had failed to recognise that his reasoning at [94] was equally applicable to chocolate-covered, finger-shaped cakes and pastries. Secondly and more fundamentally, the hearing officer’s reasoning at [96] was flawed because the mere fact that a shape is outside the norms and customs of a sector is not sufficient to endow it with distinctive character. In support of the second submission, counsel cited the following passage from the judgment of Jacob LJ in Bongrain SA’s Trade Mark Application [2004] EWCA Civ 1690, [2005] RPC 14:

“26.

With that I can turn to Mr Malynicz's main point – that a very fancy shape is necessarily enough to confer an inherent distinctive character. I would reject it. As a matter of principle I do not accept that just because a shape is unusual for the kind of goods concerned, the public will automatically take it as denoting trade origin, as being the badge of the maker. At the heart of trade mark law is the function of a trade mark – expressed in Recital 10 of the Directive as an indication of origin. The perception of the public – of the average consumer is what matters. Mr Daniel Alexander QC, for the Registrar, helpfully pointed out that the kinds of sign which may be registered fall into a kind of spectrum as regards public perception. This starts with the most distinctive forms such as invented words and fancy devices. In the middle are things such as semidescriptive words and devices. Towards the end are shapes of containers. The end would be the very shape of the goods. Signs at the beginning of the spectrum are of their very nature likely to be taken as put on the goods to tell you who made them. Even containers, such as the fancy Henkel container, may be perceived as chosen especially by the maker of the contents (e.g. shampoo) to say ‘look – here is the product of me, the maker of the contents’. But, at the very end of the spectrum, the shape of goods as such is unlikely to convey such a message. The public is not used to mere shapes conveying trade mark significance, as the Court pointed out in Henkel (detergent tablets). The same point was made about slogans in Das Prinzip der Bequemlichkeit, para. 35:

‘the authorities may take account of the fact that average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogans.’

27.

As regards the sentence from Henkel (detergent tablets) quoted above at para. 13, I do not read the Court as saying – almost as an incidental matter – that a fancy shape is ipso facto enough for registration. Mr Malynicz suggests we read ‘thereby’ as ‘therefore’. I think the Court is saying no more than that fancy shapes – those which depart significantly from the norm – may fulfil the essential function, not that they must. The approach in Mag Instrument is particularly instructive. What matters is:

‘the presumed expectations of an average consumer’ (para.7)`

In that case the fact that the shapes of the torches had in fact become well-known after the date of application was not enough to prove they had inherent distinctiveness within the meaning of Art.7(1)(b) of the Community Trade Mark Regulation (equivalent to Art.3(1)(b) of the Directive) (judgment para. 64).

28.

So I think Mr Malynicz's principal contention is wrong. Even if the shape of the goods themselves is indeed fancy, that is not enough to entitle a would-be trader in them to registration as a trade mark. (I say would-be because one is here working on the hypothesis of an unused mark.) Although a trade mark may also be a design, there are real differences between creating a fancy shape to sell as such and a fancy shape which truly in itself will denote trade origin if used. …”

I accept both of these submissions. In my judgment the hearing officer should have concluded that the trade mark was devoid of inherent distinctive character in relation to “cakes” and “pastries” as well as in relation to the other goods covered by the application.

Nestlé challenges the hearing officer’s conclusion that the Trade Mark had not acquired a distinctive character through use by the relevant date. Nestlé contends that the hearing officer should have concluded that the Trade Mark had acquired a distinctive character in respect of all the goods specified in the application.

I reviewed the relevant law at some length in Vibe at [60]-[92]. I shall take the details of that discussion as read, but for convenience I shall recapitulate the main points.

The following propositions of law were then, and remain, settled. First, for a trade mark to possess distinctive character, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish the goods or services from those of other undertakings: Windsurfing (cited above) at [46], Philips v Remington (cited above) at [35], Joined Cases C-53/01 to C-55/01 Linde AG, Winward Industries Inc and Rado Uhren AG [2003] ECR I-3161 at [40], [47], Case C-218/01 Henkel KGaA v Deutsches Patent- und Markenamt [2004] ECR I-1725 at [48], Joined Cases C-456/01P and C-457/O1P Henkel KGaA v Office for Harmonisation in the Internal Market [2004] ECR I-5089 at [34], Joined Cases C-468/01P to C-472/01P Procter & Gamble Co v Office for Harmonisation in the Internal Market [2004] ECR I-5141 at [32], Case C-136/02P Mag Instrument Inc v Office for Harmonisation in the Internal Market [2004] ECR I-9165 at [29] and Case 64/02P Office for Harmonisation in the Internal Market v Erpo Möbelwerk GbmH [2004] ECR I-10031 at [33].

Secondly, the distinctive character of a trade mark must be assessed by reference to (i) the goods or services in respect of which registration is applied for and (ii) the perception of the average consumer of those goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect: Philips v Remington at [59], [63], Linde at [41], Case C-104/01 Libertel Group BV v Benelux-Merkenbureau [2003] ECR I-3793 at [62]-[63], Henkel v Deutsches Patent- und Markenamt at [50], Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] ECR I-1619 at [34], Procter & Gamble v OHIM at [33], Henkel v OHIM at [35], Case C-445/02P Glaverbel v Office for Harmonisation in the Internal Market [2004] ECR I-6267 at [20], Case C-404/02 Nichols plc v Registrar of Trade Marks [2004] ECR I-8499 at [23], Nestlé v Mars (cited above) at [25], Case C-173/04P Deutsche SiSi-Werke GmbH & Co. Betriebs KG v Office for Harmonisation in the Internal Market [2006] ECR I-551 at [25] and C-24/05P August Storck KG v Office for Harmonisation in the Internal Market (Storck I) [2006] ECR I-5677 at [23].

Thirdly, the criteria for assessment of distinctive character are the same for all categories of trade marks, but nevertheless the perception of the relevant public is not the same for all categories of trade marks and it may therefore be more difficult to establish distinctive character in relation to some categories (such as shapes, colours, personal names, advertising slogans and surface treatments) than others: Linde at [42], [48], Libertel v Benelux-Merkenbureau at [65], Henkel v Deutsches Patent- und Markenamt at [52], Procter & Gamble v OHIM at [36], Henkel v OHIM at [38], Glaverbel v OHIM at [21]-[23], Nichols at [24]-[28], Mag v OHIM at [30], OHIM v Erpo Möbelwerk at [34]-[35], Case C-447/02 KWS Saat AG v Office for Harmonisation in the Internal Market [2004] ECR I-10107 at [78], Deutsche SiSi-Werke v OHIM at [27]-[28] and Storck I at [24]-[25].

Fourthly, in assessing whether a trade mark has acquired a distinctive character the competent authority must make an overall assessment of the relevant evidence, which in addition to the nature of the mark may include (i) the market share held by goods bearing the mark, (ii) how intensive, geographically widespread and long-standing the use of the mark has been, (iii) the amount invested by the proprietor in promoting the mark, (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor, (v) evidence from trade and professional associations and (vi) (where the competent authority has particular difficulty in assessing the distinctive character) an opinion poll. If the relevant class of persons, or at least a significant proportion of them, identifies goods or services as originating from a particular undertaking because of the trade mark, it has acquired a distinctive character: Windsurfing Chiemsee v Huber at [49]-[53], Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-1318 at [23], Philips v Remington at [60]-[62], Libertel v Benelux-Merkenbureau at [67], Nestlé v Mars at [31] and C-25/05P August Storck KG v Office for Harmonisation in the Internal Market (Storck II) [2006] ECR I-5719 at [75].

Fifthly, with regard to the 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. The expression “use of the mark as a trade mark” refers solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product as originating from a given undertaking: Philips v Remington at [64], Nestlé v Mars at [26], [29] and Storck I at [61].

Sixthly, a trade mark may acquire a distinctive character in consequence of the use of that mark as part or in conjunction with another trade mark (which may itself be a registered trade mark): Nestlé v Mars at [27]-[30], [32].

An issue which has been considered by English courts in a number of cases is whether, having regard to the propositions set out above, it is sufficient to establish that a trade mark has acquired a distinctive character 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 be asked who marketed goods bearing that mark, they would identify the applicant (whether expressly or impliedly e.g. by reference to some other trade mark used by the applicant)?

To date, the answer which has been given to this question by the English courts is that this is not sufficient, and that what the applicant must establish is 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. It is not essential for the applicant to have explicitly promoted the sign in question as a trade mark. It is sufficient for the applicant to have used the sign in such a way that consumers have in fact come to rely on it as indicating the origin of the goods. On the other hand, if the applicant has explicitly promoted the sign as a trade mark, it is more likely that consumers will have come to rely upon it as indicating the origin of the goods. See in particular the passages from British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 304 (Jacob J), Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809 at 819 (Aldous LJ), Unilever plc’s Trade Mark Application [2002] EWHC 2709, [2003] RPC 35 at [31]-[33], [37], [40] and [42]-[43] (Jacob J), Dyson Ltd’s Trade Mark Application [2003] EWHC 1062 (Ch), [2003] RPC 47 at [45] and Bongrain at [28] (Jacob LJ) cited in Vibe at [77]-[86] and the discussion in Vibe itself at [72]-[76] and [88]-[91].

Nevertheless, the English courts have recognised that it is not clear that this analysis is correct. Accordingly, in Unilever Jacob J referred questions to the Court of Justice, but the reference was withdrawn when the dispute between the parties was settled. In Dyson Patten J also referred questions to the Court of Justice, but the Court dealt with the reference on other grounds. In Vibe I stated at [89] that, had it not been for the applicant’s opposition, I would have referred questions once again. Despite the passage of more than five years since then, the position is no clearer now.

It is clear from the hearing officer’s decision that he applied the law as stated in Vibe, as he was bound to do. Counsel for Nestlé’s primary submission was that the hearing officer had fallen into error in not recognising that, in the light of his findings of fact, the present case was factually distinguishable from Vibe. Counsel’s secondary submission was that, if (contrary to his primary submission) the present case was not distinguishable from Vibe, then the issue of law discussed above should be referred to the Court of Justice for a preliminary ruling.

In support of his primary submission, counsel for Nestlé particularly relied on the passages from the hearing officer’s decision at [38] and [103] which I have quoted in paragraph 24 above. He argued that this finding of fact by the hearing officer established that a significant proportion of the relevant class of persons did rely on the Trade Mark as indicating the origin of the goods. I do not accept this submission. 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].

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.

Turning to counsel for Nestlé’s secondary submission, he argued that the law was not correctly stated in Vibe and that the correct interpretation of Article 3(3) of the Directive was that association in the sense defined above was sufficient to demonstrate the acquisition of a distinctive character.

Counsel for Cadbury valiantly argued that there was no need for a reference because it was clear from the judgment of the Court of Justice in Storck I at [60]-[62] that the hearing officer had been correct to conclude that the Trade Mark had not been used as a trade mark and hence had not acquired a distinctive character. I do not accept this argument, because it begs the question as to what is meant by “use of the mark as a trade mark”: does it require the applicant to show that, as a result of the use of the mark, consumers rely on the mark as a trade mark, or is it sufficient that consumers recognise the mark and associate it with the applicant’s goods? As I have said, I consider that the law on this point remains unclear. Furthermore, I consider that it is necessary for the law to be clarified in order to determine whether the Trade Mark had acquired a distinctive character by the relevant date.

Accordingly I shall refer a question to the CJEU which I am provisionally minded to express as follows:

“1.

In order to establish that a trade mark has acquired a distinctive character following the use that had been made of it within the meaning of Article 3(3) of Directive 2008/95/EC, 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 be asked 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?”

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.

Nestlé challenges the hearing officer’s conclusion that, in relation to all the goods applied for save “cakes” and “pastries”, the Trade Mark consists exclusively of the shape of goods which either results from the nature of the goods themselves or is necessary to obtain a technical result. Cadbury challenges the hearing officer’s conclusion that, in relation to “cakes” and “pastries”, the Trade Mark does not consist exclusively of the shape which either results from the nature of the goods themselves or is necessary to obtain a technical result.

Article 3(1)(e)(ii) of the Directive/Article 7(1)(e)(ii) of the Regulation has been considered by the CJEU in two cases, Philips v Remington (cited above) and Lego (cited above). There is very little case law on Article 3(1)(e)(i) of the Directive/Article 7(1)(e)(i) of the Regulation.

In Philips v Remington, Philips registered a graphical representation of the face of a three-headed rotary electric shaver as a trade mark. It was common ground between the parties that the trade mark was to be treated as covering the three-dimensional shape of the goods. Remington produced a three-headed rotary electric shaver. Philips brought a claim for infringement. Remington denied infringement and counterclaimed for a declaration that the trade mark had not been validly registered on various grounds, including that registration was precluded by Article 3(1)(e)(ii) of the Directive. The Court of Appeal referred to the Court of Justice a question which the Court treated as essentially asking whether Article 3(1)(e)(ii) was to be interpreted as meaning that a sign consisting exclusively of the shape of a product was unregistrable if it was established that the essential functional features of the shape were attributable only to the technical result and whether that ground for refusal or invalidity of the registration could be overcome by establishing that there were other shapes which could obtain the same technical result.

The Court answered this question as follows:

“76.

… If any one of the criteria listed in Article 3(1)(e) is satisfied, a sign consisting exclusively of the shape of the product or of a graphic representation of that shape cannot be registered as a trade mark.

77.

The various grounds for refusal of registration listed in Article 3 of the Directive must be interpreted in the light of the public interest underlying each of them (see, to that effect, Windsurfing Chiemsee, paragraphs 25 to 27).

78.

The rationale of the grounds for refusal of registration laid down in Article 3(1)(e) of the Directive is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors. Article 3(1)(e) is thus intended to prevent the protection conferred by the trade mark right from being extended, beyond signs which serve to distinguish a product or service from those offered by competitors, so as to form an obstacle preventing competitors from freely offering for sale products incorporating such technical solutions or functional characteristics in competition with the proprietor of the trade mark.

79.

As regards, in particular, signs consisting exclusively of the shape of the product necessary to obtain a technical result, listed in Article 3(1)(e), second indent, of the Directive, that provision is intended to preclude the registration of shapes whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trade mark right would limit the possibility of competitors supplying a product incorporating such a function or at least limit their freedom of choice in regard to the technical solution they wish to adopt in order to incorporate such a function in their product.

80.

As Article 3(1)(e) of the Directive pursues an aim which is in the public interest, namely that a shape whose essential characteristics perform a technical function and were chosen to fulfil that function may be freely used by all, that provision prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see, to that effect, Windsurfing Chiemsee, paragraph 25).

81.

As to the question whether the establishment that there are other shapes which could achieve the same technical result can overcome the ground for refusal or invalidity contained in Article 3(1)(e), second indent, there is nothing in the wording of that provision to allow such a conclusion.

82.

In refusing registration of such signs, Article 3(1)(e), second indent, of the Directive reflects the legitimate aim of not allowing individuals to use registration of a mark in order to acquire or perpetuate exclusive rights relating to technical solutions.

83.

Where the essential functional characteristics of the shape of a product are attributable solely to the technical result, Article 3(1)(e), second indent, precludes registration of a sign consisting of that shape, even if that technical result can be achieved by other shapes.

84.

In the light of those considerations, the answer to the fourth question must be that Article 3(1)(e), second indent, of the Directive must be interpreted to mean that a sign consisting exclusively of the shape of a product is unregistrable by virtue thereof if it is established that the essential functional features of that shape are attributable only to the technical result. Moreover, the ground for refusal or invalidity of registration imposed by that provision cannot be overcome by establishing that there are other shapes which allow the same technical result to be obtained.”

In Lego, Lego registered a sign consisting of a red eight-studded Lego brick as a Community trade mark. Mega Brands applied for cancellation of the registration on various grounds including that registration was precluded by Article 7(1)(e)(ii) of the Regulation. The Cancellation Division held that the trade mark was not validly registered in respect of “construction toys” on the basis of Article 7(1)(e)(ii). The Grand Board of Appeal, General Court and Court of Justice dismissed successive appeals by Lego.

Before the Court of Justice Lego contended that the Grand Board of Appeal and the General Court had incorrectly interpreted and applied Article 7(1)(e)(ii) of the Regulation in three respects. The first and most important argument was that the Grand Board of Appeal and the General Court had interpreted Article 7(1)(e)(ii) too broadly. In rejecting this argument, the Court of Justice stated:

“43.

In considering that complaint, it must be borne in mind that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 must be interpreted in the light of the public interest underlying them (Henkel v OHIM, paragraph 45, and Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, paragraph 59). The interest underlying Article 7(1)(e)(ii) of Regulation No 40/94 is to prevent trade mark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product (see by analogy, with regard to the second indent of Article 3(1)(e) of Directive 89/104, Philips, paragraph 78, and Joined Cases C-53/01 to C-55/01 Linde and Others [2003] ECR I-3161, paragraph 72).

44.

In that connection, the rules laid down by the legislature reflect the balancing of two considerations, both of which are likely to help establish a healthy and fair system of competition.

45.

First, the inclusion in Article 7(1) of Regulation No 40/94 of the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result ensures that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions.

46.

When the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, protection of that shape as a trade mark once the patent has expired would considerably and permanently reduce the opportunity for other undertakings to use that technical solution. In the system of intellectual property rights developed in the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators. As OHIM pointed out in its argument summarised in paragraph 37 above, that consideration underlies not only Directive 89/104 and Regulation No 40/94, with regard to trade mark law, but also Regulation No 6/2002, in relation to designs.

47.

Furthermore, the legislature has laid down with particular strictness that shapes necessary to obtain a technical result are unsuitable for registration as trade marks, since it has excluded the grounds for refusal listed in Article 7(1)(e) of Regulation No 40/94 from the scope of the exception under Article 7(3). If follows, therefore, from Article 7(3) of the regulation that, even if a shape of goods which is necessary to obtain a technical result has become distinctive in consequence of the use which has been made of it, it is prohibited from being registered as a trade mark (see by analogy, in relation to Article 3(3) of Directive 89/104, which is essentially identical to Article 7(3) of Regulation No 40/94, Philips, paragraph 57, and Case C-371/06 Benetton Group [2007] ECR I-7709, paragraphs 25 to 27).

48.

Second, by restricting the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result, the legislature duly took into account that any shape of goods is, to a certain extent, functional and that it would therefore be inappropriate to refuse to register a shape of goods as a trade mark solely on the ground that it has functional characteristics. By the terms ‘exclusively’ and ‘necessary’, that provision ensures that solely shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings, are not to be registered

…

51.

As regards the fact that the ground for refusal covers any sign consisting ‘exclusively’ of the shape of goods which is necessary to obtain a technical result, the General Court stated, at paragraph 38 of the judgment under appeal, that that condition is fulfilled when all the essential characteristics of a shape perform a technical function, the presence of non-essential characteristics with no technical function being irrelevant in that context.

52.

That interpretation is consistent with paragraph 79 of Philips. Moreover, it reflects the idea underlying that judgment, as set out by Advocate General Ruíz-Jarabo Colomer at point 28 of his Opinion in that case and also at point 72 of his Opinion in Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, that is to say, that the presence of one or more minor arbitrary elements in a three-dimensional sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, does not alter the conclusion that the sign consists exclusively of the shape of goods which is necessary to obtain a technical result. In addition, since that interpretation implies that the ground for refusal under Article 7(1)(e)(ii) of Regulation No 40/94 is applicable only where all the essential characteristics of the sign are functional, it ensures that such a sign cannot be refused registration as a trade mark under that provision if the shape of the goods at issue incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape.

53.

As regards the condition that registration of a shape of goods as a trade mark may be refused under Article 7(1)(e)(ii) of Regulation No 40/94 only if the shape is ‘necessary’ to obtain the technical result intended, the General Court rightly found, at paragraph 39 of the judgment under appeal, that that condition does not mean that the shape at issue must be the only one capable of obtaining that result.”

Lego’s second argument was that the Grand Board of Appeal and the General Court had applied incorrect criteria in identifying the essential characteristics of the sign in issue. In dismissing this argument, the Court of Justice stated at [72]:

“Once the sign’s essential characteristics have been identified, the competent authority still has to ascertain whether they all perform the technical function of the goods at issue. As has been observed at paragraph 52 above, Article 7(1)(e)(ii) of Regulation No 40/94 cannot be applicable where the application for registration as a trade mark relates to a shape of goods in which a non-functional element, such as a decorative or imaginative element, plays an important role. In that case, competitor undertakings easily have access to alternative shapes with equivalent functionality, so that there is no risk that the availability of the technical solution will be impaired. That solution may, in that case, be incorporated without difficulty by the competitors of the mark’s proprietor in shapes which do not have the same non-functional element as that contained in the proprietor’s shape and which are therefore neither identical nor similar to that shape. ”

Lego’s third argument was that the Grand Board of Appeal and the General Court had applied incorrect criteria in assessing the functionality of the sign. In dismissing this argument, the Court of Justice stated at [84]:

“In examining the functionality of a sign consisting of the shape of goods, once the essential characteristics of the sign have been identified, it is only necessary to assess whether those characteristics perform the technical function of the product concerned. ….”

It is convenient to begin by considering Cadbury’s cross-appeal. Counsel for Cadbury submitted that the hearing officer had again made the error of failing to recognise that his reasoning was equally applicable to chocolate-covered, finger-shaped cakes and pastries. I agree with this. Accordingly, I consider that the hearing officer was wrong to differentiate between “chocolate; chocolate confectionery; chocolate products; confectionery; chocolate-based preparations; bakery goods; biscuits; biscuits having a chocolate coating; chocolate coated wafer biscuits; cookies; wafers” on the one hand and “cakes” and “pastries” on the other hand. It remains to consider, however, whether the hearing officer was correct as to the applicability of Article 3(1)(e)(i) or (ii) of the Directive at all.

Before addressing the main issues in relation to this question, it is convenient next to dispose of three minor points. First, counsel for Cadbury submitted that the hearing officer’s findings at [72] supported the conclusion that feature (i) was excluded both because it resulted from the nature of the goods themselves and because it was necessary to obtain a technical result. That was not the hearing officer’s conclusion, however. In any event, I do not accept that the finding does support the conclusion that feature (i) was necessary to obtain a technical result.

Secondly, counsel for Nestlé submitted that, so far as feature (ii) was concerned, the hearing officer had not found that the position of the grooves was necessary to obtain a technical result. I do not accept this submission. As I read the hearing officer’s decision, what he meant by “position” in feature (ii) was the angle of the grooves: see in particular [78]-[79], [81(iii)] and [82]. This he did find to be necessary to obtain a technical result. (Incidentally, it should be noted that he reached the same conclusion, and for the same reasons, with regard to the angle of the exterior sides of the product. Thus, to the extent that this angle should be regarded as a feature of the shape, he dealt with it even though he did not mention it in his list at [66].)

Thirdly, counsel for Nestlé submitted that, so far as feature (iii) was concerned, the hearing officer had not found that the number of the grooves was necessary to obtain a technical result. I do not accept this submission. As I read the hearing officer’s decision, he found that it was necessary for there to be three grooves in order for there to be four fingers each of which was of the desired portion size: see in particular [77] and [81(iv)].

Turning to the main issues, counsel for Nestlé submitted that the hearing officer had made two errors of law. First, counsel for Nestlé argued that what he described as the hearing officer’s “hybrid finding” that feature (i) resulted from the nature of the goods themselves and features (ii) and (iii) were necessary to obtain a technical result was wrong because these were separate and distinct objections. Secondly, counsel for Nestlé argued that the hearing officer was wrong to conclude that Article 3(1)(e)(ii) applied to features which related to the manner in which the goods were manufactured, such as the angle of the grooves in the present case, as opposed to the manner in which the goods functioned.

So far as the first argument is concerned, counsel for Nestlé submitted that it was clear from the wording of Article 3(1)(e)(ii), and confirmed by the judgments of the Court of Justice in Philips v Remington at [76] and [84] and Lego at [48], [51]-[53] and [72], that a sign was only precluded from registration by that provision if all of the essential features of the sign were features of shape which were necessary to obtain a technical result. The hearing officer had not concluded that all three of the features he had identified at [66] were necessary to obtain a technical result, on the contrary he had concluded that feature (i) resulted from the nature of the goods themselves. Accordingly, he was wrong to conclude that registration was precluded by Article 3(1)(e)(ii). As for Article 3(1)(e)(i), the hearing officer had not concluded that features (ii) and (iii) resulted from the nature of the goods themselves. Accordingly, the hearing officer should have concluded that neither objection was made out. The objections were separate and distinct ones, and it was not permissible to combine them in the way in which the hearing officer had done.

Counsel for Cadbury submitted that the hearing officer’s reasoning was unimpeachable. He argued that it would be bizarre if a shape, one of the essential features of which resulted from the nature of goods themselves within Article 3(1)(e)(i) and the other two essential features of which were necessary to achieve a technical result within Article 3(1)(e)(ii), could be registered simply because neither objection applied to all three essential features, and that there was nothing in either the wording of Article 3(1)(e) or the policy underlying it identified by the Court of Justice in Philips v Remington at [78] to compel such a result. Furthermore, he argued that in the Lego case the basic brick shape of the sign was excluded from registration because it resulted from the nature of the goods and that it was only the studs that were excluded because they were necessary to obtain a technical result.

In my view the submission of counsel for Cadbury has much to commend it, but I do not feel able to say that this interpretation of the Directive is clearly correct.

So far as the second argument is concerned, counsel for Nestlé submitted that it was clear from Philips v Remington at [78] and Lego at [84] that Article 3(1)(e)(ii) only applied where the shape was necessary to obtain a technical result with regard to the function of the goods, not where it was merely necessary to obtain a technical result with regard to the manner in which the goods were manufactured.

Counsel for Cadbury submitted that the hearing officer was correct to hold that Article 3(1)(e)(ii) embraced both kinds of technical result. He argued that there was nothing in the wording of the provision to limit it to the function of the goods, and that it would be inconsistent with the policy underlying the provision to limit it in that way.

Again I consider that the submission of counsel for Cadbury has much to commend it, but I do not feel able to say that this interpretation of the Directive is clearly correct.

Furthermore, I consider that it is necessary for the law to be clarified in order to determine whether the Trade Mark is precluded from registration by Article 3(1)(e)(i) and/or (ii). Accordingly I shall refer questions to the CJEU which I am provisionally minded to express as follows:

“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/EC?

3.

Should Article 3(1)(e)(ii) of Directive 2008/95/EC 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?”

In case it assists the Court, it is my opinion that both these questions should be answered in the affirmative for the reasons advanced by counsel for Cadbury.

I shall refer questions along the lines indicated above to the CJEU for a preliminary ruling. I shall hear counsel as to the precise wording of the questions.