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No to the third dimension

Nestlé has failed to register a three-dimensional trade mark in the form of its four-fingered KIT KAT bar for chocolate and other goods. The hearing officer upheld Cadbury’s opposition that the mark was not registrable (except in relation to cakes and pastries) as the shape of the goods was necessary to obtain a technical result. The presence and depth of the grooves was necessary to enable it to break (a technical result) and the other recognisable features of the shape resulted from the very nature of a moulded chocolate bar. None of the essential features of the shape were arbitrary, decorative or imaginative and the mark was devoid of distinctive character as the shape was within the norm or a mere variant of the common shapes for chocolate bars and biscuits. Nestlé’s argument that the mark had acquired distinctiveness also failed. While Nestlé had shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery, it had not shown that they had come to rely on the shape to identify the origin.

Keyword advertising injunction

The High Court has granted a general injunction across the whole of the EU following a finding of infringement of a Community Trade Mark through the use of keyword advertising. The effect of this blanket injunction is mitigated by the fact that parties can obtain a ruling from the court about the effect of the injunction without the need for fresh proceedings or a contempt application. As the defendant failed to prove that the infringing signs did not affect the trade mark other than in the UK, the general rule applied that the injunction should be EU-wide.

Software claim dismissed

The High Court has held, in a claim for infringement of copyright in certain software, that the copyright was owned by the defendant who had commissioned software from the claimant software development company, and not by the claimant. The reasons given were as follows. The software was the foundation of the defendant’s business and an informed bystander would judge that no one should have a veto over the way it was exploited. An assignment to the defendant was the only way full rights could be secured in multiple jurisdictions. The defendant should be able to dispose of the copyright freely without the purchaser having to negotiate with the various claimants. As the software was a collaboration there was no sense in individuals retaining rights in what each produced. There could be no implied term that the consultant behind the claimant retained copyright on the basis that he was using the software covered by it for other software developments. Only the consultant knew that he was doing this and an implied term could not be created out of secret knowledge known by one party alone. Despite this case, it is still advisable to get an assignment of copyright when commissioning software. It provides certainty as well as being much cheaper than going to court!

Apps esoteric?

In a case involving trade mark infringement and passing off brought by a TV company running channels under the ZEE brand, against a developer who marketed an app for television viewers called Zeebox, the High Court has refused permission for the claimant to conduct a full survey to support the claim. The judge said that watching television was not an esoteric exercise, nor was the downloading of apps, and these were readily explicable to a judge. You may disagree!