shaping-nestles
Photo: Subbotina Anna / Shutterstock.com
1 June 2014Trademarks

Shaping Nestlé's IP strategy

Protecting one brand is hard enough. In-house counsel must be at the top of their game at all times to detect infringements and misuse around the world. So imagine the job of protecting some 8,000 brands. That’s the challenge facing Thorsten Gailing, a regional IP adviser at Nestlé.

Gailing is one of 26 lawyers at the Swiss-based organisation and head of the UK team, while also taking responsibility for Ireland, Sweden, Denmark, Finland and Norway.

Responsibilities at the multinational are divided across Europe, Asia, Africa and America, with lawyers in place across all the zones and key markets.

Gailing’s team alone consists of four lawyers, while at company headquarters there are 12 lawyers and seven paralegals.

“This is what makes Nestlé unique,” says Gailing. “Having local IP teams in place bridges the perceived gap between head office and the local market and gives everything a local voice.”

With brands including Nescafé, Milkybar, Rowntree’s and After Eight, one of the more difficult tasks facing the company is establishing which brands warrant the most attention. With this in mind, the IP team and its lawyers assist and advise on two types of protection: local and strategic.

Gailing has a direct responsibility for local trademarks, such as the Rowntree’s brand and its subsidiaries, while also assisting a team at head office in its work protecting strategic trademarks such as Kit Kat.

The issue of shape

Currently, most notably in the UK and South Africa, Kit Kat is at the centre of a flurry of interest.

Arguably Nestlé’s most famous brand, it has been the subject of a high-profile and long-running dispute with Mondelēz International, owner of a range of brands including Cadbury.

Nestlé applied in 2010 for a three-dimensional trademark for the shape of Kit Kat, launched in 1935, which consists of two or four ‘fingers’ of chocolate.

Cadbury appealed against the registration, claiming that the segmented structure “lacked distinctiveness” and is a common feature of confectionery products that are designed to be eaten quickly and easily.

In June 2013, the UK Intellectual Property Office (IPO), upheld Cadbury’s opposition.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Patents
21 January 2015   The man who oversaw Nestlé’s Nespresso brand of coffee machines has sued his former employer for alleged patent infringement.