Takeaway learnings from Nestle’s battle to trade mark the shape of its KitKat

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Takeaway learnings from Nestle’s battle to trade mark the shape of its KitKat

21 Mar 2016

Background
A trade mark guarantees the ‘origin’ of a product or service, enabling customers to distinguish it from others. As part of this, it’s possible for a brand to register a product’s three-dimensional shape. However, it can be tough to demonstrate that consumers perceive a product’s shape to indicate its commercial origin and those which are devoid of distinctive character, ultimately, cannot be registered.

The case

In Nestle’s case, 2010 saw the brand apply to register the three-dimensional shape of its KitKat chocolate bar as a trade mark – to Cadbury’s opposition.

The UK Intellectual Property Office (UK IPO) rejected Nestle’s request in 2013 and held, amongst other things, that the shape was devoid of distinctive character.

Nestle appealed the UK IPO’s decision, which was followed by a cross-appeal from Cadbury. A referral to the European Court of Justice concluded the on-going battle between the two confectionery giants, with the presiding judge upholding the UK IPO’s decision. Nestle has said it will again appeal the result.

The technicalities 

The shape trademark was dismissed for the following reasons:

(1) the shape of the product had not featured in Nestle’s promotions for many years,
(2) the product was distributed in opaque wrapping which did not reveal its design,
(3) there was no evidence (nor did it seem likely) that customers would use the shape of the product post-purchase to confirm its origin.

Under these considerations, it was deemed more likely that consumers would rely only on the name KitKat and other pictorial marks used in relation to the product in order to identify its trade origin, rather than its shape.

The High Court reiterated that, in order to demonstrate that a trade make has acquired distinctive character, it’s not enough to show that the public merely recognise a shape but:

“the applicant or trade mark proprietor must prove that, at the relevant date, a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question (as opposed to any other trade mark which may also be present).”

It’s true that there are success stories when it comes to registering the shape of products as trademarks, such as the prism shape of Toblerone and the shape of a Nestle Walnut Whip, as well as the Coca Cola bottle, Lego toy figures (but not the bricks), and the Rubik’s Cube. Unfortunately for Nestle, the KitKat will not be joining this exclusive group.

How we can help

The difference between recognising a trademark and relying upon it as an indication of the origin of the goods, can be one which may appear rather elusive to those who are not well experienced in trademark law.

If you would like to discuss how we can help with the registration, commercialisation or enforcement of your trademarks, please contact us or call 0161 832 3434.

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