Shape Mark Held to Lack Distinctiveness Despite Long Use
In 2019 NZIPOTM 17 Kellogg Company v Société des Produits Nestlé SA the Assistant Commissioner held that Kellog’s application for the shape of a whole piece of its NUTRI-GRAIN cereal shown from various perspectives must not be registered as it lacks distinctiveness...
Kellogg’s application consisted of these images along with the following description: The mark consists of a three dimensional shape of a piece of cereal as shown in the representation attached to the application. During examination of the shape mark the examiner raised a lack of distinctiveness objection (amongst others), but after sufficient evidence of acquired distinctiveness was provided the objection was dropped and the mark eventually proceeded to acceptance. Following publication Nestlé opposed registration of the mark on the following grounds: it comprises more than one sign; it does not contain a clear representation of the mark, it was made in bad faith and that there is a lack of distinctiveness.
The Assistant Commissioner addressed the first two grounds of opposition together. Nestlé claimed that the various representations are incongruous in that they do not collectively clearly represent a single shape mark given that there are variations in shape between the depicted representations. Following the hearing but prior to issuing the decision the Assistant Commissioner sought to resolve this by issuing a Direction under which only the second image would be considered in conjunction with the following amended description: The mark consists of a three dimensional shape of a rectangular piece of cereal with rounded ends and three holes as shown in the representation attached to the application. Kellogg supported the amendment, but Nestlé objected on the basis that such amendments can only be made if there was an error and that such amendment is not allowed as it would materially alter the identity of the mark. However, the Assistant Commissioner considered that the other depictions could have been filed in error if the applicant had assumed they all represented the same shape and that the minor differences in small parts of the images do not materially alter the identity of the mark.
In considering distinctiveness under section 18(1)(b) the Assistant Commissioner noted that given the nature of the goods the relevant persons in respect of which the assessment of the mark’s distinctiveness is to be made will be very broad. While accepting that the mark is not functional, the Assistant Commissioner found the mark to have a simplistic form that is capable of few variations or combinations and that the ordinary customer would not find it memorable or inherently distinctive in relation to the goods.
The Assistant Commissioner also noted post-application evidence of other traders using similar shapes and found them to be doing so without improper motive. In conjunction with the simple shape of the opposed mark, the Assistant Commissioner found this to point towards other traders being likely to want to use a similar shape to the opposed mark without improper motive prior to the application date. Consequently, the mark was held to lack inherent distinctiveness.
The Assistant Commissioner then noted that acquired distinctiveness can trump a finding of a lack of inherent distinctiveness and that there was evidence that the product has longstanding and geographically widespread use in New Zealand and significant market share. While the product shape in use is subject to manufacturing variations, the Assistant Commissioner found these to be minor and not such as would alter the distinctive character of the mark. However, the Assistant Commissioner also noted that significant use does not necessarily entail distinctiveness as recognition does not necessarily mean recognition as a trade mark. It was noted from other cases that establishing distinctiveness through use of a shape mark is difficult in the scenario at hand where the mark is not packaged in the shape of the goods and where the mark is only used in conjunction with distinctive marks. On its own the available evidence of use and promotion of the mark was held not to establish distinctiveness. Kellogg had also supplied other evidence regarding the distinctiveness acquired by the mark, but the Assistant Commissioner found that to be opinion or hearsay evidence from people who were not independent of Kellogg and so was ruled inadmissible. Consequently Kellogg was held not to have discharged its onus of establishing acquired distinctiveness on the balance of probabilities.
Although not required to the Assistant Commissioner went on to reject the bad faith pleading as unwarranted on the evidence, which was inconclusive as to whether other traders were using a significantly similar mark at the application date.