Nestle’s KitKat Just Can’t Get a Break

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Table of Contents

• Not Distinctive Enough
• Consumers Don’t Rely On The Shape Itself to Distinguish the Product
• Consumers Are Not Going to be Confused
• Registering a Shape as a Trade Mark
• Chocolate Wars

Nestle’s attempt to register the KitKat four-fingered chocolate bar as a trade mark has been thwarted, first by Cadbury, and now by Britain’s High Court. Nestle first tried to apply for the trade mark in 2010 and Cadbury opposed their application. Several courts, including the European Court of Justice, have since heard the matter. On Wednesday, 20 January 2016, Britain’s High Court finally decided that the recognisable chocolate bar didn’t meet the requirements of a trade mark.

Nestle’s KitKat has been around for 80 years, and many of us certainly associate the four-fingered shape with a KitKat. So why were they unable to register the shape as a trade mark?

Not Distinctive Enough

The idea behind a trade mark is some sign or representation that distinguishes your goods from a competitor’s. Brand names or logos are commonly registered as trade marks in association with their business’ goods or services. 

Five years after Nestle’s initial application to the UK Trade Marks Registry, Justice Arnold of the UK High Court of Justice has finally held that KitKat’s shape is not distinctive enough to be a trade mark.

Consumers Don’t Rely On The Shape Itself to Distinguish the Product

In considering whether the shape would be distinctive enough, Justice Arnold took care in very carefully highlighting that it was necessary to examine the shape alone, not in conjunction with the other trade marks associated with Nestle and KitKat.

Specifically, the Court noted that each chocolate finger had the KitKat logo embossed, and so, the four-fingered shape may be considered distinctive when used together with the KitKat logo. But if Nestle is applying to trade mark the shape, it needs to be distinctive enough on its own.

Although the consumers may associate the chocolate’s shape with KitKat or Nestle, it isn’t the shape itself that distinguishes the goods. Justice Arnold agreed with the hearing officer that consumers don’t rely on the shape to identify KitKat as Nestle’s chocolate, they look at the logo.

Consider the wrapper in which KitKats are commonly sold. The wrapper is opaque and doesn’t reveal the chocolate’s shape meaning that consumers are unlikely to rely on the shape at all to identify the product. Further, there isn’t any evidence showing that consumers confirm that it is Nestle’s KitKat by opening the packet after purchase to check the shape of the goods.

Consumers Are Not Going to be Confused

Cadbury’s counsel also put forward that it is likely there have been any number of chocolate bars of similar shapes on the market offered by different brands. Again, there’s no evidence showing that these other products confused customers who identified them as KitKats.

Registering a Shape as a Trade Mark

Although it’s not impossible to register a shape as a trade mark, you may encounter difficulty when demonstrating that a shape is distinctive. The triangular prism box of Toblerone is an example of a registered shape trade mark. Interestingly enough, in Australia, the individual finger and imprinted “KITKAT” mark has been registered as a shape trade mark since April 2001. It’s described as the “Trapezium bar” shape.

Chocolate Wars

This isn’t the first time that Cadbury and Nestle have fought over a trade mark. In 2013, Nestle opposed Cadbury’s attempt to register the colour purple used in its chocolate wrappers as a trade mark, which Cadbury has since successfully registered in Australia. Cadbury may have won this round, but Nestle has vowed that it will appeal the decision. In the meantime, we think we need a break. KitKat anyone?

Questions about whether you can trade mark your shape? Get in touch with our trade mark lawyers on 1300 544 755.