The European Union trademark system is governed by Regulation (EU) 2017/1001 (the EU
Trade Mark Regulation), with examination and administration conducted by the European
Union Intellectual Property Office (EUIPO). A core and frequently litigated issue in EU
practice is the registrability of three-dimensional shape marks. Under Article 7(1)(e) of the
Regulation, signs that consist exclusively of a shape (or other characteristic) necessary to
achieve a technical result, inherent to the nature of the goods, or conferring
substantial value on the goods are excluded from registration. The landmark Nestlé v.
Cadbury (KitKat Shape) case (C-215/14) clarified the criteria for technical function
exclusion and acquired distinctiveness under EU law, establishing a key precedent for
shape mark protection across the EU.
Nestlé, a global food and beverage company, sought to register a three-dimensional
shape mark for its iconic KitKat four-finger chocolate wafer. The mark depicted the
product’s rectangular, four-segmented wafer shape with uniform grooves between
segments, used since 1935. In 2010, Nestlé filed an EU trademark application covering
Class 30 (chocolate, confectionery). In 2013, EUIPO refused the application under
Article 7(1)(e)(ii) and (iii) of Regulation (EU) 2017/1001. The examiner found the shape:
● Was necessary to obtain a technical result: the grooved structure enabled easy breaking
into individual fingers, a core functional feature.
● Conferred substantial value: consumers purchased KitKat primarily for the recognizable
shape and texture, not just taste or branding. Nestlé appealed to the General Court of the EU,
which upheld the refusal in 2014. The court confirmed the shape was predominantly functional
and value-defining, not merely decorative. Nestlé further appealed to the Court of Justice of
the European Union (CJEU). In 2015, the CJEU issued a final ruling dismissing the appeal,
explicitly confirming the shape fell within the technical function exclusion and lacked inherent
distinctiveness.
● Article 7(1)(e) EUIPO Exclusionary Triad The CJEU reaffirmed the three independent grounds
for refusing shape marks:
○ Nature of the goods: shapes inherent to the product’s intrinsic nature (e.g., a sphere for
a ball).
○ Technical necessity: shapes essential to achieve a technical result (e.g., ergonomic grip
contours, structural grooves for breaking).
○ Substantial value: shapes that dominate consumer purchasing decisions and define the
product’s commercial value. The court emphasized these grounds are mutually exclusive;
satisfying one is sufficient for refusal.
● Burden of Proof for Acquired Distinctiveness Under Article 7(3) To register a functional shape
mark, applicants must prove acquired distinctiveness—that the shape, through use, has become a
badge of origin across the EU. The CJEU held Nestlé failed to prove EU-wide acquired distinctiveness:
consumer recognition of the KitKat shape varied by member state, and Nestlé could not demonstrate
the shape alone (without branding) identified its origin.
● **Distinction Between Technical Function and Aesthetic Design The ruling clarified that purely
decorative or arbitrary elements (e.g., unique curves, non-essential embellishments) may be
registrable, but design features serving a utilitarian purpose (even if visually appealing) are
excluded. The test focuses on primary purpose: if the shape’s dominant function is technical,
it is unregistrable, regardless of aesthetic appeal.
● **Conduct a pre-filing functionality audit Map all design features and separate technical/
functional elements (e.g., structural, ergonomic) from non-functional/aesthetic elements (e.g.,
unique contours, decorative details). Functional features will likely be excluded.
● **Avoid overly functional shape claims Do not file shape marks for products where the design
is essential to performance (e.g., tool shapes, medical device forms). Instead, protect branded
elements (word marks, logos) and non-functional design variations.
● **Build EU-wide acquired distinctiveness evidence If filing a functional shape mark, collect 5+
years of EU sales data, advertising spend, consumer surveys, and media coverage proving the
shape alone identifies your brand across all member states.
● **Adopt a multi-mark filing strategy Combine EU word marks, figurative logos, and non-
functional shape variations in a single application. This strengthens protection while minimizing
functional exclusion risks.
● **Leverage EUIPO’s examination guidelines Review EUIPO’s Shape Mark Examination
Practice to align applications with current criteria, particularly regarding technical necessity and
substantial value assessments.
The KitKat shape case remains a cornerstone precedent for EU shape mark protection. It
reinforces the EU’s policy of preserving free competition for functional designs over exclusive
trademark rights, ensuring competitors can replicate technical features necessary for fair
market participation. For global brands expanding in the EU, this ruling underscores the
critical need to distinguish technical functionality from brand identity when developing
shape protection strategies. By focusing registration on non-functional, inherently distinctive
elements and building robust acquired distinctiveness evidence where needed, enterprises
can secure stable, enforceable EU trademark rights while complying with EUIPO’s strict
exclusionary rules.
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