Tough break for Kit Kat

Kit Kat

An appeal from Nestlé to register the three-dimensional shape of its Kit Kat chocolate bar with trademark protection has been dismissed by the High Court.

Cadbury opposed Nestlé’s application to register the Kit Kat shape as trademark in 2010.

A Hearing Officer at the UK Intellectual Property Office determined that the trademark did not meet the requirements for registration.

However, Nestlé has said that it will appeal this decision, so the case has not necessarily ended.

The decision focused on whether Nestlé has met the requirement to prove that a significant proportion of consumers would rely on the shape of the four finger Kit Kat bar — without the Kit Kat logo embossed on each finger and without any of the packaging — as identifying that the product originated from Nestlé.

Nestlé had submitted customer surveys in the earlier proceedings, however, the Court had ruled that all the surveys showed was that consumers recognised the trademark and associated it with KitKat products.

This was not enough to cross what’s known as the “trademark registrability threshold” because Nestlé had not proven that consumers perceived the 3D trademark as exclusively designating the origin of such products.

The Hon Mr Justice Arnold stated that even if consumer surveys can be one of the factors taken into account when examining the distinctive character of a trademark, it is not a decisive factor.

Sharon Daboul, trademark attorney at legal firm EIP, said consumers are more likely to be influenced by “a brand name and the outer packaging of a product rather than its shape alone, so the threshold for registering shapes as trademarks is high.” She added that while it is rare to win trademark protection for shapes, it is not impossible — the Toblerone shape and Nestlé’s Walnut Whip are both protected.

“The hurdle is arguably higher for bigger brand owners like Nestlé and Cadbury, whose brand names and packaging are far more famous than the shapes of their products.  Allowing registration of the KitKat shape would have given Nestlé a valuable monopoly and competitive advantage over other confectionery manufacturers, which is one of the reasons why Cadbury has been keen to stop them.”

Joint Managing Director of brand valuation consultancy Intangible Business, Stuart Whitwell, said: “Certainly, Nestlé is correct in its belief that shape marks can be registered if a product’s design is considered inherently distinctive or if it has acquired distinctiveness through use. Cadbury may have scored a victory on this occasion, but it’s certainly not a final, conclusive one. There will be plenty more chapters in this sustained battle of the confectionery giants.”