Aptly dubbed the chocolate wars, Cadbury and Nestlé have been battling it out in court for quite some time, with the dispute beginning in 2010 when the latter sought a UK trademark for the “unique shape” of its KitKat bars.
While Nestlé failed to meet the requirements needed to register the trademark, it also found Cadbury had opposed its attempt. Since then the two have been sworn enemies – Nestlé blocked Cadbury’s bid to trademark the shade of purple used on Dairy Milk packaging.
Not one to be rattled by the opposition, however, Nestlé took its claim to a higher court. It lost that case too. The judge maintained that consumers identified with the word “KitKat” written on the four fingers, as well as the packaging, and not the fingers themselves.
But there’s a reason Cadbury keeps getting in the way – and why Nestlé is as persistent as ever to attain that trademark. As was suggested by Sharon Daboul, trademark attorney at EIP: “Allowing registration of the KitKat shape would have given Nestlé a valuable monopoly and competitive advantage over other confectionary manufacturers, which is one of the reasons why Cadbury has been keen to stop them.”
The case exemplifies a new trend among companies to register less traditional trademarks – we’re talking shapes, sounds, colours and smells. And looking to tap into that competitive edge, Nestlé is still at it, with the verdict of its latest attempt, on 17 May, having just been given. Guess what? Still no luck. But it doesn’t sound like the company is going to give up trying.
A company spokesperson, cited in the Independent, said: “Nestlé is disappointed by the court of appeal judgment and is considering next steps. KitKat is much loved around the world and its four-finger shape is well known by consumers. Nestlé’s four-finger shape has been granted trademark registration in many countries of the world, for instance Germany, France, Australia, South Africa and Canada, further protecting it from imitations.”
The two confectionary brands show it’s not the easy to trademark a shape though – a lesson the London Taxi Company also had to learn the hard way. It seems the shape of a black cab isn’t distinct enough. Similarly, Lindt lost a case where it hoped to monopolise chocolate bunnies.
Giving her opinion on the Nestlé case’s latest verdict, Sally Britton, IP lawyer at Mishcon de Reya, said: “This case is interesting as it examines the type of use and consumer recognition required to obtain monopoly protection over a shape mark. Businesses that have shape marks should be following this decision closely.”