Nestle SA v Unilever Plc [2002] EWHC 2709 (Ch) (18 December 2002)

Nestle SA v Unilever Plc [2002] EWHC 2709 (Ch) (18 December 2002)

The shape of the Viennetta ice cream, although widely recognised, was not shown to be relied upon by the public as a badge of trade origin and thus lacked acquired distinctive character required for registration as a trade mark. Mere recognition is insufficient; there must be evidence that the shape alone is used and relied upon as a trade mark. The white mark could not 'piggy back' on the distinctiveness of the dark mark without separate evidence of acquired distinctiveness.

Citation
[2002] EWHC 2709 (Ch)
Parties
Appellant/opponent: Société de Produits Nestlé SA; Respondent/applicant: Unilever plc
Jurisdiction
England and Wales
Judgment Date
18 December 2002
Procedural Posture
Trade Mark Opposition and Appeal / High Court Appeal From Registrar's Decision
Outcome
Appeals dismissed; registration refused for both marks.
Legal Topics
Three Dimensional Trade Marks, Distinctive Character, Acquired Distinctiveness, Shape Marks, Trade Marks Act 1994, Trade Marks Directive 89/104/eec, Opposition Proceedings
Intellectual Property Trade Marks Three Dimensional Trade Marks Distinctive Character Acquired Distinctiveness Shape Marks Trade Marks Act 1994 Trade Marks Directive 89/104/eec +1 more

Case Brief

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Parties

Société de Produits Nestlé SA

Appellant/opponent

Unilever plc

Respondent/applicant

Procedural Posture

Trade Mark Opposition and Appeal / High Court Appeal From Registrar's Decision

Legal Issues

  1. 1 Whether the shape of the Viennetta ice cream product is registrable as a trade mark under the Trade Marks Act 1994 and Directive 89/104/EEC
  2. 2 Whether the shape mark has acquired distinctive character through use
  3. 3 Whether public recognition of a product shape equates to acquired distinctiveness as a trade mark

Ratio Decidendi

The shape of the Viennetta ice cream, although widely recognised, was not shown to be relied upon by the public as a badge of trade origin and thus lacked acquired distinctive character required for registration as a trade mark. Mere recognition is insufficient; there must be evidence that the shape alone is used and relied upon as a trade mark. The white mark could not 'piggy back' on the distinctiveness of the dark mark without separate evidence of acquired distinctiveness.

Court Disposition

Appeals dismissed; registration refused for both marks.

Orders

  • Registration of the dark mark refused for lack of acquired distinctiveness as a trade mark.
  • Registration of the white mark refused; no evidence of acquired distinctiveness and cannot rely on the dark mark's distinctiveness.