Trade mark decision

BL Number
Decision date
23 October 2002
Hearing Officer
Mr M Knight
Société des Produits Nestlé SA
Mars UK Limited
Sections 3(1)(b) & 3(1)(d)


Section 3(1)(b): - Opposition failed, but mark subjected to limitations as to product, colour and size

Section 3(1)(d): - Opposition failed.

Points Of Interest

  • 1. Meaning of "customary in the trade" : Section 3(1)(d).
  • 2. Shape marks : criteria for assessing distinctiveness.
  • 3. Survey evidence.


This was one of four related sets of proceedings involving Nestlé and marks described as annular sweets, ie round sweets with a hole in the centre. The Hearing Officer's decision began with an extensive review of the history and background of these disputes and the evidence, particularly the survey evidence, filed by the parties. He then turned to consider the matter first under Section 3(1)(d). In this he had to ponder the meaning of "customary in the trade". The leading case dealing with Section 3(1)(d) (Merz & Krell GmbH [2002] ETMR 21 at page 231) had not defined what is meant by 'customary'. The Hearing Officer therefore decided that in relation to trade customary must mean a practice that is normal. In view of the number of sweet manufacturers, and the limited instances of annular shaped sweets he decided there was no objection to the mark under Section 3(1)(d).

Turning to the objection under Section 3(1)(b), the Hearing Officer noted that the criteria for assessing the distinctiveness of a shape mark are no different from those to be applied to word or device marks; but there was also the need to assess whether the shape by itself would be perceived by the average customer as conveying trade mark significance. Having considered all the evidence the Hearing Officer concluded that the buying public would see the blank sweet shape as indicative of Nestlé origin; objection under Section 3(1)(b) was therefore overcome by the use of the mark. The acquired distinctiveness however was limited to a mint flavoured compressed sweet, white in colour and of the dimensions of a standard POLO mint. The Hearing Officer imposed these limitations on the application if it was to proceed to registration.

Full decision O/440/02 PDF document457Kb