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By Fiona Kingscott

Jul 25th, 2018

A break in the case: decision granted on KitKat trade mark.

Beloved stalwart of children’s lunchboxes since 1935, few of us could claim we’ve never tasted the chocolate covered, four fingered wafer biscuit treat.

The KitKat, or Rowntree’s’ chocolate crisp as it was originally known, has become one of the UK’s most iconic brands. Not surprising then that Nestle would fight to protect its unique aesthetic.

Today’s decision from the European Court of Justice has found that KitKat’s shape isn’t entitled to protection as an EU trade mark - a decision which is sure to concern Nestle’s brand managers as they look to the future of the brand and it’s place in the global confectionary market.

Nestle had applied to register their shape as an EU trade mark, which would grant it a monopoly over the shape across the whole of the EU.  However, the court has today rejected their application.  The legal reason is that, in order to obtain an EU trade mark for a mark (in this case a shape) which does not have inherently distinctive character over all previous marks, but which has acquired distinctive character through use (which the KitKat has in 10 member states) you need to prove that it has acquired distinctive character in all the member states.  This was the court’s ruling, which said that failure by Nestle to provide evidence of acquired distinctive character in Belgium, Ireland, Greece and Portugal meant they could not have an EU trade mark.  The court actually said that failure to provide evidence for even just one member state would have destroyed Nestle’s case.

The case highlights the difficulties brand owners face when attempting to register a trade mark based on acquired distinctiveness through use (not inherent distinctiveness). 

What does this decision mean for trademarking?

In the case of KitKat, the door is open for other brands to reproduce the four fingered rectangular shape, a situation which the brand may argue could dilute the impact of its own chocolate bar.

In light of the European Court’s decision, brands may want to consider including more unique factors in their product’s designs to ensure that they stand apart, without having to prove that they have acquired distinctiveness through use alone. Inherently distinctive and original marks are what brand owners should be devising if they want the strongest monopoly rights in their marks.

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