Trade mark decision

BL Number
Decision date
9 August 2001
Hearing Officer
Mr J MacGillivray
Unilever Plc
Societe des Produits Nestle S.A.
Sections 3(2)(a); 1(1) & 3(1); 3(6)


Section 3(1): - Opposition partially successful.

Section 3(2)(a): - Opposition failed.

Section 3(6): - Opposition failed.

Points Of Interest

  • 1. Generic shapes.
  • 2. Patent did not determine the external appearance of the product.


Reviewing the law and the evidence the Hearing Officer concluded that the mark, the subject of application No 2000662 had in fact acquired a distinctive character as a result of the particular use made of it; not so with the mark in application No 2000661. The opposition under Section 3(1) therefore succeeded in the case of 2000661 but failed in respect of No 2000662. The next objection to the applications was under Section 3(2)(a), in that the mark consisted exclusively of the shape which resulted from the nature of the goods themselves. The Hearing Officer found that whilst it had been asserted that the shape was a traditional cake design known as Mille Feuille no evidence concerning this had been produced. Moreover, the applicants’ patents relating to the product concerned the internal structure, not the external appearance. Accordingly he found no objection to the applications under Section 3(2)(a). In view of the patents point he rejected the allegation under Section 3(6) that the applicants were "attempting to extend and/or prolong indefinitely the protection provided by their UK patents, thus preventing other manufacturers from producing products which they would otherwise be entitled to do after the expiry of the patents".

Full decision O/341/01 PDF document68Kb