In 2002, Nestle applied for a trademark in Europe for the shape of Kit Kat. It took four years, but the EU trademark was eventually granted. However in 2007, court action began between Nestle and Mondelez International – one of the world’s largest snack companies and owner of many high profile brands including Cadbury’s - over this issue.
Expensive and time consuming litigation followed, and in 2016 it was held that Nestlé had to prove that a Kit Kat was recognisable in every EU country - and no evidence had been provided for Belgium, Ireland, Greece, and Portugal. This decision was appealed by both Nestle and the EU’s trademark office, who argued that no company could ever reach that high standard.
Nestle’s case and appeal centred on two main questions: when deciding whether Nestle should keep its trademark,
1) Had the brand become distinctive enough to deserve its trademark?
2) Was its shape alone how people recognise the product?
Nestle’s appeal was thrown out this month, with the European Court of Justice effectively declaring that it's not enough to prove that a product has become iconic in "a significant part" of the EU - it has to be proven across all the markets.
It is likely that this decision will pave the way for supermarket and imitation brand chocolate in the famous “KitKat shape”, even though there’s still a good chance that Nestle will continue its fight as the final decision has been referred back to the EU Intellectual Property Office.
In contrast, Mondelez International actually settled out of court with Poundland over their trademark of the shape of their famous Toblerone chocolate bars. Although slightly different factually in that Poundland had produced its own similar shaped chocolate, the end result is still telling: Toberlone retains its trademark.
Trademarks, unlike patents, can last forever and essentially confer a value on a shape. This most recent decision reinforces how rare it is for a three-dimensional object to be granted trademark status, and quite how difficult is it to effectively protect a trademark of this type.
For information and advice on trademarks and similar issues, please do contact Lawrence.