Intellectual propertyTrademark

Trademark candy shape?

In a continuation of our recent posts on intellectual property disputes that span a variety of industries, we bring you yet another dispute from the chocolate industry.

Chocolate and candy-maker Nestle has attempted to trademark its iconic “four-fingered” Kit Kat bar shape in Europe, but a British court has said no.

British confectioner Mondelez (makers of Cadbury products in the UK) are seeking to produce a rival chocolate bar in a similar shape, arguing that “the shape of the Kit Kat bar is not distinctive enough to be protected as a trademark.”

While the company plans to appeal, the courts have so far ruled against the trademark. The latest case was an appeal on an earlier ruling that rejected Nestle’s attempt to trademark the shape in 2010. In a 71-point ruling citing various European trademark laws and precedents, the British high court ruled against Nestle.

Among Justice Arnold’s reasons for rejecting the appeal, he writes:

“…the Commission did not consider that mere association was enough to satisfy the test for acquired distinctiveness…”

and 

“…although the trade mark for which registration is sought may have acquired distinctive character when used in conjunction with another trade mark, it must, at a given time, in order to be eligible for protection as a trade mark in its own right, be capable of fulfilling the function of identifying the origin of the goods by itself.”

The ruling highlights the importance of nuance when it comes to trademark law around the world. In this case, distinctiveness had to be proved from a consumer perspective and not from mere usage and association with the product. The shape itself must identify the origin of the product for the consumer, according to the court, and that was not proven to be the case for the Kit Kat shape.

It is an interesting case, and we will be watching for further developments from the candy industry.

To learn more about trademark law and intellectual property protection, contact EmergeCounsel today.