Aldi Stores V Societe Des Produits Nestle S. A?

Dooney & Bourke was allowed registration of “a pebble grained texture” in combination with some other features, as a trademark for its leather handbags, but only after showing that these features combined to serve a trademark function. Further, Crown Royal’s iconic purple velvet pouch, not technically having a tactile feature, has been promoted heavily in the United States for decades. In 2006, brand owner Diageo registered the visual appearance of the Crown Royal bag having replete gold stitching as a non-traditional visual trademark by arguing that it had “acquired” distinctiveness over time. This drawback of admitting to such a strategy is that it maybe copied by competitors before the tactile element can acquire distinctiveness.
Decorative and ornamental tactile elements that are not basic and essential to be functional are eligible for protection as trademarks. To obtain protection, the bottom
the proceedings concern an application filed by Nestle to register a trade mark consisting of the shape of its confectionary. “The trade mark consists of the shape of the goods, being four bars attached to one another by a thin base as depicted in the representations attached to the application”. Aldi Stores opposed the on the ground the mark was inherently not capable of being distinguished and that Nestle's evidence does not establish the distinctiveness of shape on the date of application. Nestle argued that the shape was not functional and relied on the decision of Intellectual Property Office of New Zealand in Societe Des Produits Nestle S.A. v Horizon Biscuit Company Limited and Cadbury Confectionary Limited where it was IPNOZ conceded that while the shape had some functional aspects it was not entirely functional or so functional that the shape was descriptive of chocolate bars. However, IPONZ rejected that application on the basis that a shape mark could not be registered under New Zealand Trade Marks Act