The first question referred to the ECJ was whether, to establish that a trade mark has acquired distinctive character under Article 3, the applicant just has to show that a significant proportion of the relevant consumers recognise and associate the mark with the applicant, or whether it must show that the consumers rely on the mark alone (for example, the shape of the KitKat bar) rather than on any other brand features (such as the KitKat name and packaging), as indicating the origin of the goods.

The ECJ decided not to use the word "reliance" (which had been included in the question referred to it) but instead held that, for a mark to have acquired distinctive character, the applicant must prove that the relevant consumers perceive the goods or services as originating from a particular company by reference to the mark applied for exclusively, ignoring any other brand elements.

Since ECJ judgments only answer the questions posed in principle, it will be for the UK court to decide whether the KitKat shape meets this criteria. The fact that Nestlé had evidence that 50% of people who were shown an image of just the chocolate bar identified the shape with Nestlé or KitKat, or both, could quite possibly meet the threshold for acquired distinctiveness.

So even though, at the point of purchase, the relevant consumers do not see the shape of the bar, the fact that post-purchase exposure over a long period of time has educated the public that this four-fingered bar is a KitKat, could be valuable evidence that the shape is potentially registrable. This follows an earlier ECJ decision which said that account can be taken of the shape of the product both at the time of the purchase, when it may be all or partly hidden by packaging, but also post-purchase, once seen without its packaging (August Storck KG v OHIM C-24/05 P).

One of the issues for Nestlé was that the shape of the bar has always been used in conjunction with additional elements such as the packaging, embossment on the bar, the slogan, and the Nestlé name. Nestlé had to get over the hurdle of showing that, despite these additional elements, the shape alone was associated with the bar. The ECJ confirmed that even where a sign is used as part of a more complex brand, this does not rule out protection of the individual elements if it can be shown that the individual brand element conveys this origin message alone. How this is proved is another matter if the product is always sold under a brand name and in distinctive packaging, which will almost always be the case. Nestlé's answer to this was the survey of the unbranded shape.

It may not be a coincidence that Nestlé's KitKat packaging has evolved, with the KitKat name being now far less prominent on the packaging, and with other generic-style slogans coming in. This could be part of a strategy to address any reliance of the brand on the word components. However, the shape of the whole chocolate bar is still not visible on the packaging at the point of purchase. Whether this is something that Nestlé will look to do in the future, such as by using transparent packaging, remains to be seen.

The second question for the ECJ was whether, where a shape consists of three essential elements, one of which results from the nature of the goods (for example, slabs of chocolate are commonly rectangular) and the other two are necessary to obtain a technical result (that is, the three grooves producing four fingers of chocolate), resulting in the individual elements being objectionable for different reasons, the overall shape is objectionable under Article 3 and therefore not registrable.

Confirming its earlier decision in Hauck GmbH & Co KG v Stokke A/S and others, the ECJ concluded that at least one objection must apply to the whole shape (C-205/13; www.practicallaw.com/2-584-9609).

This aspect of the decision, far from ruling out three-dimensional shape trade marks, confirms that they are possible. There are product shapes to which, as a whole, one or more of the objections apply and, therefore, they are inherently non-distinctive and cannot be saved with evidence of use. Conversely, there will be others, potentially including the KitKat bar, where none of the objections applies to the whole shape, even if one or more of the individual component elements comes within an objection.

The third question for the ECJ was whether, if the shape is necessary because of the way in which the goods are manufactured, as opposed to the way in which they function, this precludes registration of the shape under Article 3. In terms of the KitKat bar, the issue is whether, if it is necessary to have the three grooves in the chocolate bar as a result of a manufacturing constraint, the shape is unregistrable on the ground that it consists exclusively of a shape necessary to achieve a technical result; that is, the manufacturing process.

The ECJ concluded that even if the shape is necessary because of the way it is manufactured, the sign will only be objectionable on this ground if the shape is necessary to the way in which the product is used or functions.

Companies with a brand comprised of a number of elements including shape could consider breaking down the brand and using the brand elements in different combinations. Strategies for reinforcing the role that the individual brand components play on the consumer could include reducing the prominence of the name, emphasising the shape, referencing the shape as a whole or using different colours for the packaging.

This may not help if an extreme interpretation of the ECJ's ruling is applied, to the effect that a shape can only exclusively act as an origin identifier if it is used alone without any other brand elements. That would make it virtually impossible to register the shape of a consumer product. Distinctively shaped furniture sold without packaging or a product name could fulfil that interpretation, but shape trade marks will also be refused under Article 3 if the shape gives substantial value to the products.