Iffco seeks to invalidate Nestlé trademark
A Gulf consumer goods company is seeking to revoke a trademark which has been used to protect the shape of Nestlé’s Kit Kat chocolate bar in South Africa.
Iffco, which produces the Tiffany Break chocolate bar, says the South African trademark for the shape of a Kit Kat, currently owned by Nestlé, should be declared invalid.
Tiffany Break, which comes in purple packaging, is presented in sticks of four “fingers” of chocolate.
Nestlé argued the product was too similar to its own Kit Kat brand, which has red packaging, and that the “fingers” would cause consumers to assume the products were related.
It sued United Arab Emirates-based Iffco at the North Guateng High Court in Pretoria, last year.
Iffco convinced the court that its product did not infringe the Swiss company’s trademarks but was unable to persuade it that the trademark registration for the shape of the chocolate was invalid.
Iffco argued that the shape should not be registered under law as it is needed to obtain a technical result, namely the easy release, or ‘break’ of the chocolate.
Nestlé said it had chosen the shape for aesthetic reasons and that it was non-obvious.
Issuing the initial judgment on November 27, Judge André Louw said confusion was unlikely because while customers would see the chocolate fingers as an “indication” of the product, they would not link it with a Kit Kat.
The cross-appeal , in which both parties will challenge the initial judgment, will see Iffco dispute the decision not to annul the trademark while asking the court to uphold its determination of non-infringement.
Nestlé will appeal against the non-infringement ruling.
The Supreme Court of Appeal in Bloemfontein, will hear the case later this year or early next year.
Owen Dean, consultant at Spoor & Fisher in Cape Town, said the ultimate judgment in the case could be of “major significance”, and that one plan of attack by Iffco could be to claim that the Nestlé trademark had been improperly altered from a two-dimensional trademark to three-dimensional.
“The trademark was initially filed [in 1999] as an image depicting four blocks of chocolate. It would prevent people replicating the image, but it was not registered as a three-dimensional trademark so did not provide protection for the shape,” he said.
“The argument is that [in 2002] its specifications were altered to include provisions to protect its shape and appearance, which suddenly gave it much greater protection beyond the image,” Dean told WIPR.
“Its [Iffco’s] argument is technically correct; there is a provision under South African trademark law whereby you cannot significantly alter a trademark’s identity after it is filed. I think there is substance to the argument.”
Iffco’s lawyers confirmed an appeal had been launched.
Ravi Pillay, spokesperson for Nestlé in South Africa, said Iffco was seeking to expunge the trademark in order to stop Nestlé claiming “exclusive” rights over the shape.
Pillay added that Nestlé was confident its trademark was valid.
