Have a Break- have a non-distinctive four fingered chocolate bar!

Posted by Joanna Corbett-Simmons on

For years now, Nestle has been trying to register the shape of its four finger KitKat as a trademark in the UK. 

Nestle has applied to register the three dimensional trade mark in the UK in respect of n respect of goods in class 30, including "chocolate confectionery; cakes; pastries; biscuits; biscuits having a chocolate coating; chocolate coated wafer biscuits".

The IPO initially accepted the application but Cadbury opposed it prior to registration under Article 3 of Council Directive (2008/95/EC).  The Article states that a trade mark must not be registered if:

  • it is devoid of distinctive character (Article 3(1)(b));
  • it consists exclusively of a shape which results from the nature of the goods themselves (Article 3(1)(e)(i); or
  • it consists exclusively of a shape which is necessary to obtain a technical result (Article 3(1)(e)(ii)).

Cadbury succeeded in its opposition, the hearing officer finding that:

  • Nestle had failed to show that distinctiveness had been acquired;
  • the rectangular ‘slab’ shape resulted from the nature of the goods;
  • the format of the grooves in the slab, which divides a KitKat into detachable ‘fingers’ and the number of grooves were necessary to obtain a technical result.

Nestle appealed and, on appeal, Mr Justice Arnold referred three questions to the European Court of Justice.  Advocate General Wathelet agreed that to prove distinctiveness has been acquired, Nestle would have to show that consumers would identify the commercial origin of the product from the shape alone and not simply that the shape has become associated with the business.  However, he did not require evidence that consumers are already relying on the shape as a sole indicator of origin.

Mr Justice Arnold queried whether, where one of three essential features of the shape results from the nature of the goods themselves (the slab-like overall shape of the chocolate bar) while the other two (the number and format of the grooves) are necessary to obtain a technical result, this would prevent registration of the mark.  AG Wathelet found that the provisions of Article 3(1)(e) may be applied cumulatively provided at least one of the provisions "fully applies to the shape" but it is not clear whether this means that at least one of the criteria must apply to all features of the shape.   He did clarify that if a shape is a result of the necessary manufacturing process it may be precluded from registration but it does not need to be the case that the shape has a technical function in the final product.

Mr Justice Arnold’s conclusion was therefore, that the mark could not be registered as consumers do not rely on the shape alone to identify a KitKat as the bar also shows the KitKat brand name.

However, the general consensus is that Nestle will continue the battle, particularly as AG Wathelet’s ambiguous comments could be interpreted in their favour.  It took Nestle over 40 years to register the ‘Have a Break’ slogan as a trademark so the fight may not be over for quite some time.

Whilst the KitKat may be the only four fingered chocolate bar which immediately springs to mind, apparently others do exist, notably the Norweigen ‘Kvikk Lunsj’ which is also available in the UK.

About the Author

Joanna is an Associate in the Litigation & Dispute Resolution team in Cardiff specialising in corporate and shareholder disputes, professional negligence and contentious intellectual property matters.

Joanna Corbett-Simmons
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029 2068 6156

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