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Kit Kat and the registrability of a shape as a trade mark

Print publication

02/03/2016

Under the Trade Mark Directive [1], a shape that is capable of being represented graphically may qualify for trade mark protection if it is capable of distinguishing the proprietor’s goods or services from those of its competitors.

Nestlé had applied unsuccessfully for registration of the shape of its four-fingered Kit Kat bar in the UK. Nestlé appealed to the High Court and the case was eventually sent to the Court of Justice of the European Union (CJEU) for a ruling.

In a ruling in September last year [2], the CJEU held that, to achieve registration of a shape as a trade mark, the applicant must demonstrate that that mark alone, as opposed to any other trade mark which may also be present (such as a logo on the packaging) identifies the origin of the goods. This reflected the IPO position that the shape of the Kit Kat bars was not distinctive and failed to call to mind the Nestlé brand as there were similar shaped products on the UK market.

The case then reverted to Arnold J in the High Court, who has now delivered his judgment, ruling against Kit Kat.

Arnold J’s judgment, notable in large measure for its criticism of the habit of CJEU judges of reformulating the questions posed to them by national judges and, as such, not always answering the question, focused on whether the shape of Nestlé’s Kit Kat bar had acquired distinctive character. To do this, Nestlé needed to show that, at the relevant date, a significant proportion of consumers perceive the Kit Kat bar as originating from Nestlé because of the sign in question – i.e. the shape of the bar – rather than any other feature, such as a logo or packaging.  This was a different and more demanding test than that for which Nestlé were arguing, namely that the acquisition of distinctive character was attained by a relevant proportion of consumers recognising the sign in question – the shape of the bar – and “associating” it with Nestlé.

There were a number of ways in which the evidence suggested that consumers did not recognise the shape as originating from Nestlé:

  • the shape did not feature in Nestlé’s promotions for the product in the many years prior to the trade mark application
  • the product was sold in packaging which, until a few months before the filing of the application, did not show the shape
  • there was no evidence to suggest that consumers used the shape after buying the chocolate bar, to check the product was from the intended source (i.e. it was a Nestlé KitKat)
  • survey evidence showed that at least half of survey respondents who were shown the product recognised it and associated it with Kit Kat. However, this was not the same thing as perceiving that the shape exclusively designated the trade origin of the product – the crucial distinction between “association” and recognising the shape as a sign of origin
  • there were likely to have been other similarly shaped products on the market in the period leading up to the application and there was no evidence that consumers thought they were Kit Kat products.

In the circumstances, Nestlé had failed to show that the shape had acquired distinctiveness. As such, it was ineligible for registration.

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[1] 2008/95/EC
[2] Case C-215/14

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