degrees for the sides of the product and the breaking grooves resulted from the nature of moulded chocolate
products, and the depths of the grooves was necessary to achieve a technical result. Fourthly, the number of
breaking grooves and fingers was determined by the desired portion size.13 In the result it was held that
Nestlé's finger wafer shape was contrary to section 3(2)(b) of the United Kingdom Act, which prohibits the
registration of "the shape of goods which is necessary to achieve a technical result."
[32] Nestlé submitted that achieving a portion size is not a technical result, but simply a marketing choice. In
addition, the finding that the number of fingers reflects a technical result (portion size) is wrong because it is
not necessary to have breakable fingers at all to achieve a portion size. The choice of fingers rather than
square or squat rectangular pieces of chocolate is an aesthetic choice, not dictated by technical
considerations. Portion size can just as easily be adjusted by increasing the size or weight of the fingers and
the number of fingers is, therefore, not necessary to achieve a portion size. As regards the presence of
breaking grooves, whilst necessary to achieve breakability, the shape of the fingers joined by that groove,
and thus the length and breadth of the groove itself, was not necessary to achieve a technical result. I agree
with these submissions. In addition, the finding that the basic rectangular "slab" shape of the finger wafer
shape trade marks resulted from the nature of moulded chocolate
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bars, was the result of this generally rectangular shape being attacked on the basis that it "results from the
nature of the goods themselves." This challenge, however, is not raised in these proceedings.
[33] This decision of the UK IPO was appealed by Nestlé to the Chancery Division Société des Produits Nestlé SA v
Cadbury UK Ltd [2014] EWHC 16 (Ch). On 17 January 2014, Justice Arnold referred certain questions to the
Court of Justice of the European Union and expressed his views on the questions raised. His views do not
constitute findings of the court and with respect do not require further consideration.
[34] In my view, there are a number of features of Nestlé's finger wafer shape trade marks, which are distinctive
and not attributable only to a technical result. Most significant is the "plinth" or "apron" which forms the basis
for the composite finger wafer shapes, whether in the form of the four or two finger varieties. This imports a
distinctive appearance and aesthetic appeal to either product. I disagree with Iffco's contention that the
"plinth" is merely an arbitrary addition to the product. In addition, the "finger" shape of each of the chocolate
wafer bars when viewed from above is distinctive. I agree with Nestlé's contention that the high length to
width ratio of each of the chocolate wafer fingers is distinctive and a major nonfunctional element of the
chocolate bars as a whole.
[35] I am fortified in these views by the rationale underlying the provisions of section 10(5) of the Act which "is to
prevent trade mark protection from granting its proprietor a monopoly on technical solutions, or functional
characteristics of a product which a user is likely to seek in the product of competitors."14 It is quite clear that
the finger wafer shape trade marks in issue do not grant Nestlé a monopoly over trapezoidal shaped
chocolate bars. Iffco does not identify what "technical solution" or "functional characteristics" Nestlé has
obtained a monopoly over in terms of the finger wafer shape trade marks.
[36] I, accordingly, agree with the conclusion of the court a quo that Nestlé's finger wafer shape trade marks are
not solely shapes of goods which incorporate a technical solution. Iffco's appeal against the court a quo's
refusal to expunge Nestlé's finger wafer shape trade marks from the register, accordingly, fails.
Nestlé's application for interdictory relief based upon Iffco's alleged use as trade marks of the 4 finger wafer
shape and 2 finger wafer shape trade marks
[37] Nestlé alleges infringing use by Iffco of its 4 finger and 2 finger wafer shape trade marks in the following
manner. In the shape of Iffco's Break 4 finger wafer product:
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