AG’s opinion on Kit Kat trademark was ‘correct’, lawyers argue
An advocate-general (AG) was correct to recommend that the Court of Justice of the European Union (CJEU) rejects Nestlé’s bid to trademark the shape of its four-finger Kit Kat, UK lawyers have argued.
Yesterday, June 11, AG Melchior Wathelet stated that Nestlé’s application for a UK trademark covering its chocolate bar was not eligible for trademark protection.
In July 2010, Nestlé applied for the trademark at the UK Intellectual Property Office (IPO). But in 2011, Cadbury opposed the application.
The IPO rejected the application in 2013, stating that the proposed mark was “devoid of inherent distinctive character” and two of its features were necessary to obtain a technical result.
Nestlé appealed against the IPO’s decision and the case later appeared before the English High Court. However, the court stayed the case and referred it to the CJEU.
The CJEU asked the AG to offer his views, and yesterday he said the shape of the Kit Kat bar was “ necessary to obtain a technical effect” and therefore ineligible for protection.
UK lawyers told WIPR today, June 12, that the AG was correct to recommend that the CJEU rejects Nestlé’s trademark application.
Iain Connor, partner at law firm Pinsent Masons, said that “just because consumers recognise the shape as a Kit Kat, it does not mean they recognise it as a trademark”.
He said the case was similar to Lego’s attempt to obtain trademark protection for its 3D brick. In 2010, the CJEU rejected the attempt on the grounds that the shape of the brick was functional are therefore not eligible for trademark protection.
“It shows the court is wary about granting trademark protection to a 3D item,” Connor added.
Jerry Bridge-Butler, partner at patent and trademark attorneys firm Baron Warren Redfern, also agreed that the AG’s recommendation was “correct”.
“Registering the shape of the four-finger bar was a step too far.”
But Bridge-Butler added that the latest battle between Cadbury and Nestlé is a “faux legal war” and that no-one “seriously confuses the two brands”.
“The companies have been at each other’s throats for years.”
