Kellogg Company v Societe des Produits Nestle S.A. [2019] NZIPOTM 17 (28 June 2019)

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Societe des Produits Nestle S.A. (“Nestle”) opposed trade mark application No. 967881 for a shape mark, being a bolt shape cereal known as Nutri-Grain (the “Nutri-Grain mark”), in class 30 in the name of Kellogg Company (“Kellogg”).

Nestle’s opposition claimed that the Nutri-Grain mark was non-distinctive. Further, Nestle claimed that the Nutri-Grain mark was invalid because it was comprised of more than one sign, and was unclear. The Commissioner accepted Nestle’s opposition, on the basis that the Nutri-Grain mark was non-distinctive.

Nestle’s primary contention was that the Nutri-Grain mark (which was comprised of more than one image), was not a trade mark. Nestle also claimed that the Nutri-Grain mark did not comply with filing requirements because the images were unclear.

The Commissioner did not make a decision on either of these issues, but indicated that it would be prudent for future applicants to ensure their trade mark applications for three-dimensional shapes included different perspectives of a single shape that were identical.

Nestle also contended that the Nutri-Grain mark had no distinctive character because it was the shape of the cereal goods themselves, and further, that it was common to the trade. The Commissioner found that the Nutri-Grain mark was not sufficiently distinctive that it would be regarded as an indication of trade origin by the trade, or the average consumer of cereal. The Commissioner also noted that the fact that there was actual use by other traders of a similar shape to the Nutri-Grain goods, pointed toward the likelihood that other traders would wish to use a similar mark without improper motive.

In addition, the Commissioner found that the Nutri-Grain mark had not acquired a distinctive character through use or any other circumstances.

Although the Commissioner did find that Kellogg’s application had not been made in bad faith, the Nutri-Grain mark was denied registration.

This article was written by Lan Pham and Daniel Wilson.

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