The dispute concerned Nestlé’s attempts in 2010 to register a UK trade mark for its four-finger KitKat chocolate bar shape. A hearing officer at the UK Intellectual Property Office determined that the trademark did not meet the requirements for registration, while at the same time Cadbury opposed it on the basis that its shape was not distinctive enough to allow consumers to identify it on site.
When Nestlé appealed to the High Court, the judge referred three questions to the Court of Justice of the European Union (CJEU) for clarification. And he has recently issued his decision – ruling in favour of Cadbury.
The decision focussed on whether Nestlé had met the requirement to prove that a significant proportion of consumers would identify the four-finger shape as belonging to the KitKat brand without both its logo embossed onto each of the fingers and without any packaging.
The judge claimed that consumers likely relied only on the word mark KitKat and the packaging used in relation to the goods in order to identify the trade origin of the products. He said: “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”.
This was echoed by Sharon Daboul, trademark attorney at EIP, who suggested that due to a consumers reliance on outer packaging, the threshold for registering shapes as trademarks was high.
“The hurdle is arguably higher for bigger brand owners like Nestlé and Cadbury, whose brand names and packaging are far more famous than the shapes of the products,” she explained. “Whilst the name Kit Kat is far more distinctive than the shape of the chocolate bar that Nestlé tried to register, Nestlé had to prove that it was the unbranded shape alone that consumers relied upon to know the product. Proving that consumers associated the shape with a KitKat bar was not enough; consumers had to rely on the shape as an indication of origin and the onus was on Nestlé to have shown this in the earlier evidence rounds.
“This seems to be a common-sense decision and perhaps public policy also played a part. 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.
“It follows an earlier dispute between the manufacturers over registering the colour purple as a trademark; Cadbury lost that battle in 2013. However, this may not be the end this long running, tit-for-tat dispute with Cadbury, as Nestlé has already said that it will appeal this decision.”
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