Chocolate Wars: KitKat Trade Mark Clash Leaves a Bitter Taste in the Mouth for Nestlé

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Following on from our update in October 2015, Nestlé’s appeal to the high court has been unsuccessful with the high court holding that the 3D shape of the four-fingered KitKat is not distinctive enough to warrant a trade mark and has denied Nestlé’s trade mark application.

After being referred to by the high court for clarification, the Court of Justice of the European union (CJEU) decided that in order for the trade mark to acquire distinctive character, it must be satisfied that the four-fingered shape (as opposed to the logo used on the fingers) must on its own be sufficient for people to recognise that the four-fingered bar is a KitKat.

In his written ruling, Arnold J concluded: “In these circumstances it seems likely that consumers rely only on the word mark KitKat and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KitKat (and therefore with Nestlé), but no more than that.”

Therefore, associating the four-fingered shape with KitKat is not enough to prove acquired distinctiveness.

Arnold J goes on to say that Nestlé had not promoted the chocolate bar’s shape as one of its selling points and had also distributed it in an opaque wrapping which did not reveal its four-fingered design.

“Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

Public policy may also play a part in that the registration of the four-fingered shape, would give Nestlé a competitive advantage over other confectionery manufacturers – which is also why competing chocolatier Cadbury’s had taken the matter to the European court.

The threshold for registering shapes as trade marks is high. Consumer will usually be influenced by a brand name and packaging instead of the shape. However, whilst it is rare to win trade mark protection for shapes, there are examples of where such marks have been granted – for example, the Coca-Cola bottle.

If you require assistance in identifying the intellectual property in your business, or would like advice on protecting or exploiting any of your intellectual property, please do not hesitate to contact me at john.pickervance@forbessolicitors.co.uk or on 0800 689 0831.

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