Court turns to ECJ for guidance in VIENNETTA shape mark battle

In Société de Produits Nestlé SA v Unilever plc, the High Court has referred questions to the European Court of Justice (ECJ) seeking guidance on the correct interpretation of provisions in the Community Trademark Directive governing the registerability of three-dimensional shapes as trademarks.

Unilever, the manufacturer of fancily-decorated ice cream sold under the registered mark VIENNETTA, applied for trademarks for the shape of two varieties of the product. The first was for the shape of the original dark chocolate product ('dark mark') and the second was for the shape of the white chocolate variant ('white mark'). Nestlé opposed the applications stating that the shape should be excluded from registration because pursuant to Article 3 of the directive it (i) was devoid of distinctive character; and (ii) consisted exclusively of the shape that results from the nature of the goods themselves.

At the UK Trademark Registry proceedings, Unilever argued that the shape had acquired a distinctive character as a result of use. To back up its claim, Unilever produced evidence of sales worth nearly £250 million, extensive product advertising and the results of a consumer survey. The hearing officer allowed the application for the dark mark, but refused the white mark on the basis that the specific evidence only related to the dark mark. Both parties appealed to the High Court - Unilever in relation to the refusal of the white mark and Nestlé with regard to the approval of the dark mark.

The High Court upheld the refusal of the white mark and stated that there was insufficient evidence to support the application for the dark mark. It reasoned that Unilever had established that the public associate the shape with Unilever, but that this did not mean that it had acquired a distinctive character under the directive, particularly as there was no evidence that (i) Unilever had used the shape to denote trade origin or, (ii) the public relied on the shape to denote trade origin.

However, the court acknowledged that the law in this area is not certain. Therefore, prior to issuing a final judgment on the dark mark, the court has sought two clarifications from the ECJ. First, whether the fact that a substantial proportion of the relevant public associate a certain shape with a particular trader gives that shape a distinctive character and allows it to be registered; and second, if not, is it necessary to prove that the shape is used and relied upon as a guarantee of trade origin?

The answers to these questions should provide important guidance on the registerability of shapes under the directive.

Jeremy Dickerson, DLA, London