19th May 2017

Nestlé foiled in KitKat trademark claim

Food and drink giant Nestle has once again failed in a bid to trademark it’s four-finger Kit Kat chocolate bar following a decision by the Court of Appeal on Wednesday.

The case has pitted Nestle into a long running feud against rival confectioner Cadbury, who argues that the four-finger shape lacks the distinctive character to be protected as a trademark in the UK.

In the decision, which backs up the findings of a High Court ruling made last year, the Court of Appeal decided that Nestle had failed to demonstrate a distinctiveness in the shape of the Kit Kat.

The judges ruled that while the four-finger shape of the product might be strongly associated with the Kit Kat bar that does not automatically mean the public have come to “perceive the shape as a badge of origin such that they would rely upon it alone to identify the product as coming from a particular source”.

The disagreement took an international turn in 2015 when Nestle were unsuccessful in trying to persuade the European Court of Justice that the shape was sufficiently distinctive to be registered.

The Court of Appeal cited this judgement in their own, stating: -

“There can be no doubt in light of the decision of the CJEU in this case that it is not sufficient for an applicant for registration of an inherently non-distinctive mark to show that, as a result of the use which has been made of it, consumers merely recognise it and associate it with the applicant’s goods.”
Business Action

The judgement confirms the high bar that is set for businesses to register shapes as trademarks - they will need to provide strong evidence that consumers are relying on that trade mark to identify its origin. The judges noted that contributing to Nestle’s wafer-thin argument in this regard was there was no evidence the shape of the Kit Kat had featured in Nestlé’s recent promotional and advertising material.

The ruling means that rival businesses can manufacture and sell products that look similar to a Kit Kat with a reduced risk of litigation.

The question now remains if Nestle will have a break from this marathon trademark saga, or if they will look to appeal to the Supreme Court.

Once secured, a trademark offers a business 10 years of protection with an option for renewal at the end of that period. 

Chris Langford is part of Berwins' expert commercial team. The team offers support to businesses seeking to protect rights through trademark and intellectual property support. 

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