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Kit Kat "Have a Break" from Trade Mark Protection

Bringing a moment of pause to a legal battle that has lasted over a decade, The Court of Justice of the European Union recently held that the shape of Nestlé's famous Kit Kat bar did not warrant protection as a trade mark - much to the delight of rival chocolatier Mondelez.

Whilst Nestlé was able to trade mark its chocolate bar, embossed with the Kit Kat logo; the issue here was trying to also trade mark the actual shape of the four finger Kit Kat bar - already shared with Norwegian rival Kvikk Lunsj. The Court held that Nestlé should have provided evidence of the "distinctive character" of this shape across every EU member state, rather than the 10 countries in which it conducted market surveys and research.

The implications for this ruling could be far reaching for other EU trade mark holders, who may not be able to assert distinctive character across the EU, as opposed to a number of member states. The battle is far from over however, as the European Intellectual Property Office could still decide to uphold its initial decision that the trade mark is valid.

This case is an example of how high a hurdle the CJEU are putting in place for potential EU trade mark holders. Whilst this does not necessarily affect trade mark registrations held on a national level, for those business wishing to protect their intellectual property across the EU, the test for distinctiveness must now be proven across 28 (soon to be 27) member states.

Nestlé remain in good company however. Similar issues have been faced by rival chocolate companies, with Cadbury failing to trade mark a certain shade of purple, and Lindt being unable to trade mark its yearly Easter bunnies. Whilst not impossible, it seems for now at least that to trade mark shapes and colours on this level the bar is high indeed, with the iconic Coca Cola bottle and triangular Toblerone bar being rare examples of succeeding to do so.

If you have any questions about trade marks or intellectual property for your business, or would like assistance on any other commercial law matter; contact John Pickervance, Associate Solicitor within the Commercial department by email John Pickervance or phone 0333 207 1134. Alternatively, send any question through to Forbes Solicitors via our online Contact Form.

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