Nestlé Can’t Get a Break in Stopping CopyKats

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The Advocate General of the European Court of Justice has issued an opinion on the attempted registration of the KitKat shape in the latest development of an intellectual property war between chocolate manufacturers Cadbury’s and Nestlé.

Swiss confectionary giant, Nestlé, has for a number of years been trying to register the shape of its four-fingered KitKats as a trade mark, in an attempt to prevent the rise of imitation goods on supermarket shelves.  Whilst Nestlé initially achieved success, an appeal by competing chocolatier Cadbury’s has taken the matter to the European Court.

Nestlé has argued that the KitKat shape has acquired distinctiveness through use and has pointed to the results of a street survey, in which 90% of those asked appeared to correctly recognise a photograph of an un-packaged KitKat.

However, Advocate General Wathelet has made a number of recommendations to the Court.  Whilst the guidance is not conclusive nor binding, the European Court often follows the senior lawyer’s advice.  He has stated, for instance, that the shape of the product alone (as opposed to any other trade marks present) must indicate, without any possibility of confusion, the origin of the goods, and he has rejected Nestle’s argument that it was not necessary for a trade mark to have been used independently to have acquired distinctive character.

The Advocate General also considered that the shape of the KitKat is partly the result of the nature of the good itself and partly the result of the mechanical process used to create it.  His opinion is that where a shape is necessary to obtain a technical result (such as the separation of the fingers) both in terms of how the goods function and their manufacturing process, a trade mark registration is precluded.

Any adverse decision is likely to impact on Nestlé’s efforts to clamp down on own-brand copycat goods, however, it is merely the latest in a long line of intellectual property disputes between Nestlé and Cadbury’s, with the latter’s drawn-out attempts to register its iconic purple dashed by Nestlé in 2013.

The issues are expected to be formally dealt with by the European Court of Justice, before being concluded by the English High Court.

If you require assistance identifying the intellectual property in your brands, or would like advice on the protections available in the UK and across Europe, contact John Pickervance, a solicitor specialising in commercial law and intellectual property on 0800 689 0831 or via our Contact Form.

This entry was posted in Corporate & Restructuring.

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