'Four-finger' shape proceeds to registration


In Société des Produits Nestlé SA v Aldi Stores (A Limited Partnership) ([2010] FCA 218, March 5 2010), the Federal Court of Australia has allowed Société des Produits Nestlé SA’s appeal against a decision of a delegate of the registrar of trademarks upholding Aldi Stores' opposition to the registration of the well-known Kit Kat 'four-finger' shape in respect of “chocolate-coated confectionary blocks”.

The appeal was uncontested in the sense that Aldi and Nestlé agreed to resolve the matter by consent. Importantly, Nestlé also obtained a letter from the deputy registrar of trademarks which indicated that the registrar had no objection to the original decision of the delegate being set aside. In these circumstances, there was no basis for the court to rule that Nestlé’s 'four-finger' shape should not be registered. The court was satisfied that “[i]t [was] in no sense self-evident that the mark… should not be registered”.

It is true that the Kit Kat 'four-finger' shape was accepted for registration during the examination phase, and that it would have been registered but for Aldi’s opposition. However, the circumstances in which this appeal was allowed deprived the court of the opportunity to examine the delegate’s decision in the contested opposition proceedings [2008 ATMO 76]. This is somewhat unfortunate, if only because the delegate refused unequivocally to register the 'four-finger' shape.

The 'thread' of Aldi’s opposition (as summarized by the delegate) was that the 'four-finger' shape "is not a trademark at all, it is a functional shape of the goods, one which [Nestlé] does not use as a trademark, but is attempting to disguise as one for the purposes of this exercise”. In refusing to register the 'four-finger' shape, the delegate decided that this 'thread' was "of such substance that it trips up the application".

The delegate formed this view based on his consideration of the evidence, which included pictures of various chocolate bars divided into squares. The pictures satisfied the delegate that it must be commercially desirable to be able to break the chocolate into smaller portions, either fingers or squares. This was consistent with the fact that Nestlé’s only reference to the shape of a Kit Kat (on packaging and in marketing material) was for the purpose of emphasizing that, in either two or four-finger form, a Kit Kat has a functional shape which allows individual fingers to be snapped off. Accordingly, the delegate decided that the arrangement of the four fingers was “entirely irrelevant to anything that might have a trademark function”.

The delegate thus upheld Aldi’s opposition and refused registration of the mark. Somewhat ironically, the delegate referred to additional arguments that were relied on by Aldi in its opposition (but which he did not need to consider), saying only that they were “less conclusive” and that he would “leave them to be dealt with elsewhere if necessary, hopefully on better evidence”.

The situation is somewhat unfortunate because the court has not had the opportunity to consider the merits of Aldi’s arguments on any evidence (let alone on better evidence). Having regard to the earlier decisions of the Federal Court in Global Brand Marketing Inc v Cube Footwear Pty Ltd ([2005] FCA 852) (for further details please see "DIESEL footwear shape mark moves step further towards trial"), Sebel Furniture Limited v Acoustic & Felts Pty Limited ([2009] FCA 6) (for further details please see "Use of a functional shape is not use as a trademark, says court") and Chocolaterie Guylian NV v Registrar of Trademarks ([2009] FCA 891) (for further details please see "Federal Court takes hard line on shape registration"), it is unlikely that Nestlé would have been successful had Aldi contested this appeal.

Julian Gyngell, Kepdowrie Chambers, Wahroonga

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