Nestlé wins trademark battle over Kit Kat shape
Food manufacturer Nestlé has won a six-year trademark dispute against confectionery brand Cadbury over the shape of its chocolate-covered biscuit Kit Kat, preventing the sale of rival products with similar four-fingered designs.
Nestlé trademarked the Kit Kat’s shape in 2006, but Cadbury appealed against the registration on the grounds that the segmented structure lacked distinctiveness and is a common feature of confectionery products that are designed to be eaten quickly and easily.
Nestlé disputed Cadbury’s claim, arguing that the design is instantly recognisable to consumers and that the trapezoid shape of each finger is unique to Kit Kats, but the trademark was invalidated. In 2011, Nestlé appealed against the invalidation and on Wednesday, the Office for Harmonization in the Internal Market’s board of appeal upheld the company’s complaint.
The board ruled that while the overall shape of a Kit Kat is banal, the key characteristics of the product’s design, and the biscuit bar’s significant market share in several EU member states, are “sufficient to make that shape be recognised by the relevant public as a badge of origin.”
The ruling prevents Cadbury and other manufacturers from selling confectionery, bakery products and biscuits with the same structure.
A spokesperson for Nestlé said the company is delighted with the board of appeal’s decision. A Cadbury representative did not confirm if the company will appeal against the ruling, as it is still studying the decision, but added: “we do not have any plans to launch such a product in the UK anyway.”
The case is the latest in a series of high profile trademark disputes between Nestlé and Cadbury: in October last year, UK High Court judge Colin Birss granted Cadbury exclusive use of the Pantone 2685C shade of purple used to package the company’s milk chocolate bars, preventing Nestlé and other confectioners from using the colour to package eating or drinking chocolate products.
Commenting on the case, Emma Roe, partner and head of commercial IP at Cobbetts LLP in Leeds, England, said Nestle and Cadbury’s trademark dispute, much like Apple and Samsung’s on-going patent battle, is another example of high profile companies using IP protection mechanisms to aggressively challenge their rivals.
“There has been plenty of discussion around how some businesses can use UK patent registrations in a very defensive manner, holding off the competition, but what this trademark decision together with the other recent cases shows is how aggressively trade mark registrations can be challenged if a big brand owner wants to go on the offensive instead.”
Roe also said that the case is an important example of how brand owners in any sector can prove acquired distinctiveness and use it to protect unusual or non-traditional marks.
“Key to this decision is its confirmation that the shape of a product, if not dictated by its function, can be a really powerful brand attribute,” she said. “These types of attribute, as opposed to a product name, have a tough time establishing that they are inherently distinctive, however, what is again confirmed by this decision is the very real possibility of acquiring that distinctiveness from a continued period of use and market penetration.”
