Who: Nestlé v Cadbury; The London Taxi Company v Frazer-Nash Research
Where: High Court
When: 20 January 2016
Law stated as at: 10 February 2016
Attempts by Nestlé and The London Taxi Company Ltd (“LTC“) to register trade marks for the shape of a KitKat and of a London black cab (respectively) have failed, opening the door for rivals to bring imitation products to market.
Everyone loves a KitKat – the satisfying “snap” when separating its quartet of chocolate-covered wafers; the ubiquitous “Have a break…” tagline; and, of course, the unashamedly excessive peanut butter KitKat Chunky!
And even if you’ve never visited the city, it is likely that you would recognise the characteristic silhouette of a London black cab – every bit as much a symbol of our capital as Big Ben or the red phone booth, the black cab is (officially) London’s favourite transport “design icon”.
Yet despite this widespread familiarity, the High Court has ruled that neither shape is sufficiently distinctive to qualify for trade mark protection.
The Chocolate War
Nestlé has been embroiled in a long-running legal battle with confectionery rival Cadbury ever since Nestlé thwarted Cadbury’s attempts to register a trade mark for the shade of purple used to market its Dairy Milk bars. Responding in kind, Cadbury has continuously opposed Nestlé’s efforts to monopolise the KitKat shape, since the first application back in 2010.
In this case, Nestlé argued that the shape of its four-finger KitKat has been associated with the company since the snack was launched in 1935, citing a survey that showed 90% of consumers associated an unbranded four-finger chocolate bar with Nestlé’s product.
In his ruling, however, Arnold J noted that Nestlé had not promoted the KitKat’s shape as one of its selling points and had distributed it in an opaque wrapping that did not reveal its design. The judge also questioned whether a consumer would look at the four-finger chocolate bar and straight away know it was a KitKat, without the embossed ‘KitKat’ logo or distinctive wrapper.
The court held that the shape alone was not distinctive enough for consumers to definitively identify such chocolate bars as KitKats. The existence of a similarly-shaped bar produced in Norway since 1937 called Kvikk Lunsj – which is apparently available in some UK shops – did not help Nestlé’s case.
Nestlé has indicated that it intends to appeal the decision. Cadbury, meanwhile, is playing its cards close to its chest – although this ruling paves the way for Cadbury to release a rival ‘KitKat-shaped’ chocolate bar, it has revealed whether or not it intends to do so.
Black cab v ‘green’ taxi
In a similar case, LTC – manufacturer of the traditional black cab – instigated proceedings for both passing off and trade mark infringement against Frazer-Nash Research Ltd, claiming that the latter’s environmentally-friendly ‘Metrocab’ was a copy of the latest version of LTC’s hackney carriage.
LTC had succeeded in registering both UK and Community trade marks on the basis that the shape of the black cab had acquired distinctiveness through use. Arnold J held that the marks should not have been granted as the three-dimensional exterior of the typical black cab was “devoid of inherent distinctive character“. Moreover, he ruled that the trade marks should be declared invalid, as there was insufficient evidence of distinctiveness having been acquired through use.
The decision was based on the notion that the London black cab shape would be perceived by consumers as “merely a variation on the typical shape of a car” and would not be perceived as identifying the trade origin of the taxi. In other words, although consumers might readily identify a licensed London taxi from its shape, they would not necessarily associate the shape with LTC as manufacturer.
Why this matters:
The theoretical ability of brand owners to secure virtual monopoly rights in the shape of their products through trade mark registration is not in doubt – indeed, several products have trade marks registered for their shapes; the Coca-Cola bottle and the Toblerone chocolate bar are notable examples.
These decisions, however, illustrate the difficulty of obtaining trade mark protection for three-dimensional shapes, even where the shape in question has exceptional recognition amongst consumers.
The UK courts also appear to be setting a very high bar on acquired distinctiveness for three-dimensional trade marks. In order to satisfy the “acquired distinctiveness” requirement, brand owners would have to promote the product as a shape in its own right, stripping it of all other branding which may tell consumers where the product originates.
Nonetheless, it is hardly surprising that either company pursued these actions with such vigour. Having a trade mark registration gives the owner a monopoly right that (unlike registered designs, patents or even copyright) can potentially last forever. If a manufacturer is able to bar its competitors from ever using a particular shape or colour for a competing product, it presents that manufacturer with a significant advantage.