©2016. Published in Landslide, Vol. 9, No. 1, September/October 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
When a judge begins his opinion with the question “In what circumstances can a trader secure a perpetual monopoly in the shape of a product by registering it as a trademark?”1 the trademark owner should know that he is facing an uphill battle. And indeed, two years after Justice Arnold of the England and Wales High Court posed this question, he finally dismissed Nestlé’s appeal against the U.K. Intellectual Property Office’s refusal to register the shape of its “Kit Kat” chocolate bar as a trademark.2 On the way, he referred several questions on the interpretation of harmonized EU trademark law to the Court of Justice of the European Union (CJEU), which were answered—or not—in a September 2015 judgment.3 The fact that the CJEU’s decision was regarded as both a break for Nestlé4 and a blow against Nestlé5 should indicate that the law is more nuanced than a 140 character summary can convey. And indeed it is—while successfully protecting the shape of a product as a trademark in the European Union has not become easier, three-dimensional trademarks are certainly not “dead in the water.”6
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