Whittaker's successfully registers shape of chocolate bar as trademark

In J H Whittaker & Sons Limited v Empire Confectionery Limited ([2015] NZIPOTM 4, April 22 2015), J H Whittaker & Sons Limited, one of New Zealand’s best-known and well-loved chocolate companies, applied to register the shape of one its chocolate bars, called a 'Santé bar':

The chocolate bar has been sold since the 1950s in New Zealand, often unwrapped and on display in the counters of stores and coffee shops.

The mark can be described as the three-dimensional shape of a rectangular finger or bar with two tapered ends.  The rounded-off ends of the bars was said to be decorative, not functional.

The mark was accepted by the Intellectual Property Office of New Zealand and then opposed by Empire Confectionery Limited, which said that it had been selling a similar shaped chocolate bar since 1994.

The assistant commissioner found that the trademark did not have enough distinctive character to be considered inherently distinctive. The trademark was simply not unusual enough.

The assistant commissioner also considered whether the mark consisted only of a sign or indication that designated the characteristics of the goods, or in other words, whether it was descriptive of chocolate. She considered that the shape was not required by the nature of the goods or by the objective of obtaining a particular technical result. The shape was considered to be convenient, but was not wholly determined by functional considerations.

Despite failing on inherent distinctiveness, Whittaker's easily crossed the line when it came to acquired distinctiveness. The 'Santé bar' holds just over 40% of the 0 to 25g enrobed chocolate market in New Zealand, and is ranked second in the enrobed market segment for size 0 to 25g products. Although the bars are often sold wrapped in foil more recently, they were for many years sold unwrapped as individual bars. Where the bars are wrapped, the wrapping is designed to hug the chocolate so that the shape is visible and recognisable.   

This decision can be contrasted with the recent opinion of Advocate General Wathelet in Société des Produits Nestlé SA v Cadbury UK Ltd (Case C-215/14), which considered the shape of Nestlé’s Kit Kat bar, a four-finger chocolate-coated wafer bar:

The advocate general’s opinion was that if any key aspects of the shape are the result of the nature of the goods themselves or necessary to obtain a technical result, and at least one of these grounds fully applies to the shape as a whole, registration should be denied. 

He also found that a shape which is necessary to obtain a technical result, not only with regard to the manner in which the goods function, but also with regard to the manner in which they are manufactured, is also precluded from registration.

A key difference in terms of the marketing of the two chocolate bars is that Whittaker’s 'Santé bar' is often sold unwrapped, and where it is wrapped, the shape is visible, unlike the Kit Kat where the shape is only seen once the wrapper is taken off. That said, Whittaker’s 'Santé bar' would have been denied under the advocate general’s test because at least some of the features, and arguably some of the key features, are necessary to achieve a technical result, which, in relation to small single-serve chocolate bars, is generally that they are in a shape that can be picked up and eaten. It seems difficult to imagine any three-dimensional shape where one of the key aspects of the shape is not the result of the nature of the goods themselves, or necessary to achieve a technical result. 

Kate Duckworth, Catalyst Intellectual Property, Wellington