Further Setback for Nestle as Kit Kat Shape Trade Mark Unlikely

Intellectual Property Lawyer Comments On Landmark Case

16.09.2015

David Shirt, Press Officer | 0161 838 3094

The Court of Justice of the European Union (‘CJEU’) has today ruled that the four- fingered shape of the Kit Kat bar should not become a registered trade mark, agreeing with the Advocate General’s opinion given in June this year that the shape of the product on its own had not attained the requisite “acquired distinctiveness” to quality for trade mark protection.
 
The court re-affirmed the rule that, in order to protect a three-dimensional shape as a trade mark, it must be proven that consumers perceive the goods which are designated by the mark as exclusively originating from a particular company.  As a result, Nestle would have to show that without the embossed branding ‘Kit Kat’ present on each of the fingers of the bar, people would still assume that the product could only have come from Nestle and not from another source.  People recognising the shape, or associating the shape with the Kit Kat product, would not be enough to give the product what would potentially be a perpetual monopoly over this particular shape.  Advocate General Wathelet said back in June that this would “not reasonably be expected”, but it will be down to the UK court to decide on the facts whether this has been shown.
 
Over the past 80 years, the Kit Kat has grown into one of the world’s most popular chocolate bars, selling more than 1 billion packs per year.  In 2010 Nestle applied to register the three-dimensional shape of the bar as a UK trade mark to cover products such as chocolate confectionary, biscuits, cakes and wafers.  Nestle successfully managed to persuade the Trade Marks Registry that, due to the history and widespread use of the shape since the creation of the Kit Kat, the shape had acquired a distinctive character such that it qualified for protection as a trade mark.

However Cadbury opposed the application on various grounds, the principal being that under the EU Trade Mark Directive a sign cannot be registered if it consists of a shape which is necessary to obtain a technical result; essentially, that the four fingers separated by breaking grooves were there to make it easy for the product to be manufactured and for customers to break the fingers apart rather than, as is required for trade mark protection, to enable consumers to distinguish the Kit Kat from other products.  The hearing officer at the Trade Marks Registry agreed with this view and accepted Cadbury’s opposition.
 
Nestle appealed to the High Court, where the judge referred this issue of ‘acquired distinctiveness’ to the CJEU.  The CJEU now having given its decision, the case will be referred back down to the High Court who will apply its decision to the facts.

Expert Opinion
“CJEU decisions do not generally depart from Advocate-General’s opinions, and this case is no exception. On the key issue of whether it was enough for people to associate the four-finger shape with the Kit Kat, the court ruled that more is needed, and that the shape on its own (without any branding or packaging) must allow people to identify the particular company from which the Kit Kat originates.

"The CJEU decision will still need to be interpreted by the High Court in light of the specific facts, but on the basis of this opinion it is bad news for Nestle and good news for Cadbury.”

Georgie Collins, Partner