Nestlé’s foiled attempt to protect KitKat

14 Jun 2017

The Court of Appeal has upheld the High Court’s ruling and found that Nestlé is not allowed to register a trade mark in the UK to protect the four-finger KitKat because acquired distinctiveness in shape has not been demonstrated.

The Swiss firm, which spent between £3m to £11m per year in advertising from 1996 to 2007, has so far been unsuccessful in its attempts to register the 3D trade mark. Nestlé has fought for 10 years to protect the ‘iconic’ shape of the four-finger chocolate bar and this marks the most recent leg of Nestlé’s protracted legal battle with the US owner of Cadbury, Mondelēz.

Trade marks confer monopoly rights which can potentially last forever and, as such, are seen as valuable assets for businesses. Therefore, it is entirely understandable why these two confectionary giants have decided to battle this dispute out over so many years.

The court had to consider whether the four-finger KitKat was sufficiently distinctive to Nestlé to prevent any other manufacturer from using a similar format. For example, Toblerone (which is owned by Mondelēz) has successfully registered the “zigzag prism” shape.

Three appeal judges handed down a 16,000 word judgment after over three months of deliberation and found that the four-finger design was not a “badge of origin” and had “no inherent distinctiveness”.

The court found that although the four-finger shape may be “very well known” in connection with KitKat, “that does not necessarily mean that the public have come to perceive the shape as a badge of origin such that they would rely upon it alone to identify the product as coming from a particular source.”

The judges go on to say that the association and recognition do not amount to distinctiveness for the purposes of registering and protecting the 3D trade mark because the public, “might simply regard the shape as a characteristic of products of that kind or they might find it brings to mind the product and brand name with which they have become familiar”.

The judgment creates a treacherous position for Nestlé as it paves the way for competitors to produce their own bars similar to the KitKat with a lesser risk of litigation.

A Nestlé spokesperson has announced that the company is considering its next move and is not prepared to give up as, “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”.

That being the case, it would not be a surprise if we were to see Nestlé apply for leave to file an appeal to the Supreme Court before too long.

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