The four-fingered, three-dimensional shape of the Kit Kat chocolate wafer, created in 1935 at the Rowntree’s Yorkshire factory, has been at the centre of a long-running trade mark dispute with Cadbury in the purple corner. Heidi Bernard reports the latest appeal verdict in a recent assortment of confectionery brand cases
Who: Nestlé, Cadbury
When: 18 December 2012
Where: Office of Harmonization for the Internal Market, Second Board of Appeal
Law stated as at: 29 January 2013
The four-fingered, three-dimensional shape of the Kit Kat, created in 1935 at the Rowntree’s Yorkshire factory, has been at the centre of
a long-running trade mark dispute.
Nestlé (which now owns Rowntree) registered the shape of the Kit Kat as a 3D Community Trade Mark in 2006 at the Office of Harmonization for the Internal Market (“OHIM”). Rival Cadbury then won an appeal that invalidated the registration in the Cancellation Committee.
The Second Appeal
Nestlé has now won a European-wide ruling from the OHIM Second
Board of Appeal, reinstating the 3D trade mark registration and preventing rival companies from producing similar products.
The Second Board of Appeal stated that although the trade mark lacked distinctiveness as and of itself, it had acquired distinctiveness
through use and ruled that there was sufficient evidence to demonstrate that it was at least likely that the public exclusively associated the shape with Kit Kat.
Why this matters:
This case has been one of a flurry of unusual confectionary trade mark disputes in recent years. In 2012 Cadbury secured a ruling that
prevented rivals using the purple colour of its Dairy Milk wrappers. Lindt, however, failed to register a European 3D shape mark to protect its well-known gold foil wrapped chocolate rabbit. The Swiss confectioner has also found itself in an on-going legal battle in the German courts with Haribo, who claim that Lindt’s 3D gold bear infringes Haribo’s trade mark for the registered brand or word “Goldbär”.
Confectionary companies are seeking to monopolise, not only through conventional trade marks such as words or logos, but also unconventional ones such as colours, and the shape of a product or its packaging.
Nonetheless, it is difficult for confectioners to secure a trade mark registration for a product shape as they must provide compelling
evidence of ‘acquired distinctiveness’. They must demonstrate that the consumer is able to readily identify the product’s origin by reference to its shape, independent of other brand indicators. This would be particularly challenging for low-cost products, where the level of attention paid by consumers is correspondingly low, as well as for shapes that do not depart substantially from the norm. Further, Trade mark offices and the courts have also tended to be resistant to evidence from consumer recognition surveys.
The decision could be appealed.