Chocolate wars

The Court of Appeal has refused to allow Nestlé to trademark the shape of the four finger KitKat bar. This is the outcome of the latest round in this long-running dispute between Nestlé and Cadbury.

Readers might recall that Cadbury previously failed in its own attempt to register the colour purple that identifies Cadbury Dairy Milk after Nestlé complained.

So what did Nestlé argue?

That the shape of the four bar KitKat was unique and should therefore be protected by a trademark. Chocolate connoisseurs will be aware that there is a strikingly similar Norwegian four finger bar, Kvikk Lunsj (translation: quick lunch), around since the 1930s, so how could KitKat be regarded as sufficiently unique to secure registration? Nestlé already has some trademark protection of KitKat in many countries. The EU court found that Nestlé had to be able to show the public relied on the shape alone and not the brand to identify it. Cocoa enthusiasts might also be aware that Nestlé has previously trademarked “Have a break”  in respect of the KitKat.

KitKat as a brand is recognisable for more reasons than the shape. The Court of Appeal found that the KitKat shape had not acquired distinctive character as the shape was hidden by the packaging and not marketed in itself.  

Nestlé are naturally disappointed and reportedly considering their next step. The Supreme Court could be asked to hear the case. Cadbury’s owner was reported celebrating the judgment.

Why is the case interesting?

Because it relates to a shape mark. The case looked at the type of use and consumer recognition required to secure monopoly protection over a shape mark. Black cabs successfully secured a shape trademark but not many applications have been successful. The case sets the bar at a high level for protection of shapes, sounds, colours and smells. To secure protection it would be necessary to show that the shape alone is adequate to denote the brand in the eyes of the consumer.

Is this bad blood or is there a legitimate commercial interest?

Copycat imitations of famous brands are increasingly adopted by the supermarkets. If the name is already trademarked, the copycat can seek to look like the original. This is a genuine commercial interest that can be addressed by protecting a shape, colour etc. Such applications are increasing.  

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