How Chocolate Wars “shape” the law: KitKat, three-dimensional trade marks and the enigma of “technical function”

The extent to which shapes can function as trade marks is a question that has generated a fair amount of controversy and uncertainty. Of particular concern is the issue of whether functional shapes necessary to produce a technical result, which are statutorily excluded from registration, can potentially be registered as trade marks under a narrow construction of the shapes exclusion. This article critically evaluates the extent to which recent jurisprudence in the United Kingdom has departed from established European Union (EU) precedent by adopting a strict “element-by-element” test for technical shapes, and the implications of this test for Hong Kong. The article argues that such an interpretive methodology is out of touch with earlier EU cases and threatens to undercut the basic principle that certain shapes should be freely available for use in the marketplace. As such, Hong Kong courts should reject this test and abide by established trade mark principles when considering the registration of shapes in the local context.