The battle started in the European Courts in 2002 with Nestlē seeking action against a similar looking chocolate bar on sale in Norway. Kvikk Lunsj had been made since 1937 (just two years after the original KitKat was launched) and was owned by Cadbury Schweppes, but is now part of the Mondelez stable of brands. Although Nestlē were successful in securing protection for their ‘trapezoidal bars” in Canada, Australia and South Africa, courts in the EU have finally decided that Nestlē had not been able to prove that KitKat had acquired the “distinctive character in the part of the EU in which it did not previously have such character”. To put it simply there was insufficient evidence to show that that the format of the chocolate bar was recognisable as being KitKat in all EU member states, therefore it did not merit an EU Trademark. The brand owner had managed to prove this in in ten EU countries, including the UK, but presented no such evidence in Belgium, Greece, Portugal or Ireland.
In a previous appeal of the dispute to the UK High Court, Judge Lord Justice Floyd, reasoned “…have in mind a basket of unwrapped and otherwise unmarked chocolate bars, in the shape of the mark applied for…for there to be acquired distinctiveness, the consumer must perceive these goods as being KitKats. A perception that they look like KitKats is not enough.”
This landmark decision will path the way for copy-cat versions and probably deter other manufacturers from seeking to trademarking unique shapes in future. Other brands that have also had unsuccessful trademark appeals include Lindt Gold Bunnies, Lego bricks and London Taxis, although the Coca Cola bottle, Pringles Crisps and Mondelez’ Toblerone bar have been successfully protected.
Nestlē has announced that they are “disappointed”, and it is now up to the European Intellectual Property Office to determine what happens next. Since there is no evidence that the shape is distinctive across the whole of the EU, it may decide to remove the KitKat trademark from their register. Or Nestlē could make an appeal to the UK Supreme Court which is highly probably considering the effort that has gone into the case so far, providing stronger evidence that the shape is distinctive across the EU.
Does it require branding? The shape must not only be recognisable when seen together with the product’s branding
Is the shape distinctive enough? Can you prove that the shape is unlike anything else in its sector?
Make the shape part of the brand. If you promote the shape of the product to consumers so that they come to recognise the shape, not just the branding when identifying the product, it could help your case in court
Get proper legal advice – PromoVeritas can offer sound advice before you decide to take action. To find out more about our services, or for advice on all aspects of running compliant marketing campaigns contact PromoVeritas at firstname.lastname@example.org or call +44 203 325 6000.