In its appeal, ������ٱ�é sought to use the recognisability of its product to show that it had acquired a distinctive character. On appeal the case was referred by the UK Court to the Court of Justice of the European Union to decide three separate issues:

1. whether the trademark had acquired distinctive character following the use that had been made out of it;
2. whether the three essential features of the KitKat—one which derives from the nature of the goods themselves and two which are necessary to obtain a technical result—are precluded from registration by UK and EU law; and,
3. whether the should be interpreted as precluding the registration of shapes that are necessary to obtain a technical result.

The distinctive character of the KitKat bar could not be confirmed��merely because of its recognisability. The definition of a trademark in the EU is “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”. Additionally, the registration of a trademark cannot be rejected if “before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character”. The Trade Marks Act in the UK contains an almost identical provision. To satisfy these requirements ������ٱ�é relied on a survey in which over 90% of those surveyed identified the four-finger shape as a KitKat. The premise was that KitKat had acquired a distinctive character through its use over time. This strategy failed.

The shape of a KitKat can be reduced to three features: the rectangular slab shape, the grooves between the four fingers, and the number of grooves. The first feature was given little consideration by the Court because most chocolate bars are rectangular slabs. Both the second and third features were assessed as existing in order to obtain a technical result - separating the four rectangular slabs - and so were considered as a means to an end and not the end itself.

������ٱ�é’s strategy was peripheral rather than direct. The strategy of using the recognisability of the bar using survey evidence failed to address the problems that the court identified. ������ٱ�é failed to show that members of the public could separate the shape of the bar from the logo embossed onto it or the packaging associated with it.

Following the decision in��������ٱ�é, businesses should consider whether their products have features that result from the nature of their goods or are necessary to obtaining a technical result. Failing to successfully register a trademark can be costly. Competitors and other interested parties often bring challenges to these sorts of applications. From a policy perspective, the ruling is intended to prevent the monopolization of the features related to a shape.

The decision is not entirely dissatisfying for ������ٱ�é, who was concerned that the CJEU might confirm an written by the Advocate General of the UK High Court. In that opinion Advocate General Wathelet denied the trademark to ������ٱ�é and—further than the CJEU—required the shape of the proposed trademark to be distinguished from goods with different commercial origins.

The CJEU did agree, however, that the trademark for which the application was brought was “capable of fulfilling the function of identifying the origin of the goods by itself”. In other words, the CJEU took the 10% of respondents who saw the four-fingered shape as something other than a KitKat as a very significant group. For a 3-D product, however, the recognisability of the proposed trademark is not enough for the product to acquire a distinctive character.��In January of 2016, the case was heard in the UK High Court of Justice, Chancery Division. After an exhaustive review of the CJEU decision��as well as British case law,��������ٱ�é's application��was .

In 2014, Canadian Parliament passed which made significant amendments to our Trade-marks Act [the Act]. In particular was an amendment to Section 32 of the Act. The amendment, expected to come into force sometime in 2016,��allows a 3-D trademark to be registered where that trademark is distinctive at the filing date of the application.��The ������ٱ�é��decision will likely be persuasive in Canadian jurisprudence given the similarity between the UK and Canadian provisions.

Quin Gilbert-Walters is an IPilogue Editor and a JD Candiate at Osgoode Hall Law School. He also works as a Research Assistant at the Canadian Forum on Civil Justice.

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An is a work whose rightsholder is difficult or impossible to locate. This problem affects two categories of people: users and rightsholders. Users, who intend to use a work whose rightsholder is unlocatable, must conduct an exhaustive search for the rightsholder, apply to a copyright board for a licence to use the work, or use the work without permission. And, rightsholders, whose copyright protected work is used without authorization, may be forced to sue or forgo recognition of their intellectual property. As the issues surrounding the use of orphan works tangentially affects many stakeholders, a diverse group of people with different backgrounds were invited to participate in the hackathon. This group included: lawyers, policy makers, judges, law students, software engineers, film directors, archivists, librarians, and��private license issuers.

Under the leadership of IP Osgoode's founder and director, Prof. Giuseppina D'Agostino, and Margaret Hagan, a fellow from Stanford University's , the process was used to corral the diverse set of participants. Design thinking aimed to focus everyone's energy on��achieving the hackathon’s end goal—the creation of a new model of licensing orphan works—despite the group's seemingly divergent backgrounds, concerns, and approaches to problem-solving. In the design thinking process an out-of-the-box idea can spark a radical change, potentially leading to a greater quantity of unique solutions. It was therefore a rule that all ideas proposed were to be considered.

The participants were split into teams and tasked with creating a prototype. My team was comprised of an archivist, two computer programmers-turned law students, the director of a private licence issuing company, and two upper-year law students. Each individual brought a unique perspective and skill-set to the table. Because coders, archivists, private licensors and law students metaphorically speak different languages, we had to reframe the orphan works problem into plain language that we could all understand. To translate the problem into a universal language, our team employed visual aids, analogies, and definitions. The “anything goes” rule of design thinking boosted our initial meeting, as everyone felt free to ask any clarifying questions.

To facilitate prototyping, we were shown existing solutions in other jurisdictions. Representatives from the Copyright Board of Canada, the Intellectual Property Office and the Copyright Office presented the orphan works regime in their respective jurisdictions. After hearing their presentations, my teammates and I realized that our solution needed to incentivize rightsholders to register their creations and also incentivize users to obtain a license for the use of copyright protected works. In the end, our prototype was a simple registration/licence application process where rightsholders and users could��follow a series of simple steps. It incorporated some aspects from the UK Intellectual Property Office and was not confined to just Canada because it included the copyright registries of countries around the world.

Orphan works present a complicated problem: users can either forgo the use of a work or use it and potentially suffer consequences while rightsholders struggle to have their rights respected. Simplifying and reframing complex problems can lead to simple solutions with broad applicability. The IP Osgoode Orphan Works hackathon may prove to be an ideal model for future hackathons and large-scale problem solving.

Quin Gilbert-Walters is an IPilogue Editor, a JD Candiate at Osgoode Hall Law School, and a Winkler Institute Research Assistant.

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