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31 January 2016Trademarks

WIPR survey: English High Court wrong on Kit Kat ruling, lawyers say

The English High Court’s decision to reject Nestlé’s attempt to trademark the shape of the four-fingered Kit Kat chocolate bar was wrong, readers have told WIPR.

In WIPR’s most popular survey to date, 70% of respondents said they disagreed with the ruling, handed down by Mr Justice Arnold earlier this month.

In his January 20 decision, Arnold said the proposed trademark had not acquired distinctive character and that consumers would not necessarily recognise the shape as a trademark if the Kit Kat brand name was absent from the product.

Nestlé’s attempt to trademark the shape in 2010 was opposed by rival chocolate maker Cadbury in a dispute which made it all the way up to the Court of Justice of the European Union.

Despite the survey results, readers’ comments indicated that there was still plenty of disagreement surrounding the decision.

One said that if the shape of the Kit Kat has not acquired enough distinctiveness to be protected as a trademark then “we may as well abandon the concept of acquired distinctiveness”.

But another said that “no consumers” rely on the shape to recognise the product as Nestlé’s.

“The product is sold in foil packaging that doesn’t even allow you to see the shape of the product. The shape simply does not function as a trademark in any way,” the readers said, adding that allowing the trademark would give Nestlé an “undeserved and unfair monopoly”.

Following the ruling, lawyers told WIPR that the dispute would probably continue given that Nestlé is planning to appeal against the decision and that there were uncertainties in Arnold’s ruling.

But one respondent seemed to think that the outcome should have been more straightforward.

“Open the pack, see the chocolate bar, you know it’s a Kit Kat. That’s a (registrable) trademark. Only people who spend too much of their lives in trademarks would think otherwise,” the reader said.

Another reader asked what a purchaser would think if it unwrapped a plain, unmarked “identically shaped and sized four-wafer” bar.

“I suspect most would think it was a ‘knock-off’ of the well-known Kit Kat bar, and thus that it was not connected with the makers of that brand.”

For  this week’s survey we ask: “Last week, we reported that the US government was considering making it harder to obtain high damages in copyright cases. Do you think it is too easy to obtain substantial damages in copyright cases?”

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More on this story

Trademarks
21 January 2016   Nestlé’s failure to register the 3D shape of the Kit Kat in the UK will not be the end of the story, as there is uncertainty following yesterday’s court decision, lawyers have told WIPR.
Trademarks
20 January 2016   The English High Court has dismissed Nestlé’s appeal against a decision to reject its trademark application for the 3D shape of the four-finger Kit Kat chocolate bar.