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Breaking Nestlé's Kit Kat trade mark

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United Kingdom

AG opinion on Nestlé's battle to register the shape of the four finger Kit Kat chocolate bar as a UK trade mark.

Nestlé is continuing its battle to register the shape of the four finger Kit Kat chocolate bar as a trade mark in the UK. On 11 June, Advocate General Wathelet provided his advice to the Court of Justice of the EU ("CJEU") on the matter.

Under Article 3 of Council Directive (2008/95/EC), which harmonizes trade mark law around the EU, a trade mark must not be registered if (among others):

  • 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)).

However, in relation to the first obstacle, distinctive character, a trade mark will not necessarily be refused registration under this section if it has already acquired a distinctive character as a result of the use made of it in the market place.

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

KitKat (1)

Although the UK IPO initially accepted the application, on the basis that Nestlé had shown evidence of acquired distinctiveness, Cadbury took action to oppose the application prior to registration on the grounds listed above.

Cadbury won the opposition at first instance, following which Nestlé appealed to the High Court. Mr Justice Arnold then referred three questions to the Court of Justice. The hearing officer's reasoning at first instance was as follows:

On Article 3(1)(b), the hearing officer found that Nestlé had failed to show acquired distinctiveness. Even though a significant portion of the relevant public recognised the Kit Kat shape, Nestlé had not shown that those consumers relied upon the shape as an indicator of trade origin; and
On Article 3(1)(e), the hearing officer found that the rectangular "slab" shape resulted from the nature of the goods whereas the format of the grooves, which divided it into detachable "fingers" and the number of such grooves, were necessary to obtain a technical result.

AG Wathelet agrees that in order to prove acquired distinctiveness, the applicant must show that consumers would be able to rely on the shape alone, to identify the commercial origin of the products 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.

If followed, this advice may the door open for Nestlé to argue that the exceptionally high levels of recognition shown in its evidence would allow the shape to be used on its own as indicating origin – for example, if the product was sold in a transparent and unbranded packet – even if it has not yet been used like this. If so, then that evidence may still support an argument for acquired distinctiveness.

Arnold J also asked for clarification on Article 3(1)(e). Where one of three essential features of the shape results from the nature of the goods themselves, i.e. the slab-like overall shape of the chocolate bar, while the other two, i.e. the number and format of the grooves, are necessary to obtain a technical result, does this prevent registration of the mark?

AG Wathelet applied the reasoning from the earlier Hauck case and 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". It is not totally clear what this advice means. If his view is that at least one of the criteria must apply to all features of the shape, then this advice would go in Nestlé's favour, supporting an argument that number and shape of the grooves should be considered independently. After all, there are many other chocolate bars which use differing numbers and formats of grooves to produce a chocolate bar which is easy to break into reasonable portions.

AG Wathelet wraps up with a clear and helpful statement on manufacturing processes. If a shape is conditioned by the manufacturing process which is itself necessary for the production of the product, that shape may well be precluded from registration. It does not need to be the case that the shape has a particular technical function in the final product.

There is still scope for Nestlé to argue around these grounds for refusal in a future case on the Kit Kat shape. However, whether Nestlé will be able to do so the current appeal, which is limited to reviewing the legitimacy of the hearing officer's original decision, is another question.

This article was previously published in IP Magazine July/August edition. 

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