Nestlé may find it harder to convince UK judges that the shape of its Kit Kat chocolate bar is distinct enough to trademark, after the European Union’s top tribunal set strict limits on what qualifies the status.
For a shape to deserve a trademark, owners must prove that consumers can recognise the product exclusively by that characteristic, and not in combination with another trademarked aspect, the EU Court of Justice said in a recent ruling. The judgment gave both sides an opportunity to claim victory.
The EU court decision will help guide a UK tribunal handling a clash between Cadbury, the UK’s biggest chocolate maker, and Nestlé over the Swiss company’s 2010 application to trademark the four-fingered chocolate bar, which brought in £40 million a year between 2008 and 2010 in the UK. Cadbury is separately fighting an EU trademark that Nestlé received for the shape of its chocolate bar in 2006, in a case that’s been pending in a lower EU court since 2013. Any decision will determine whether or not the trademark is valid.
Kit Kat was first sold in Britain in 1935 by Rowntree & Co., with the shape changing very little since then. Nestlé, the world’s biggest food company, bought Rowntree in 1998.
The UK Trade Marks Registry turned down the application to protect the shape of the chocolate bar in the UK in 2013, following the opposition from Cadbury.
The EU court recently said that trademark protection can’t be given if a shape “contains three essential features, one of which results from the nature of the goods themselves, and two of which are necessary to obtain a technical result”.
Vevey, Switzerland-based Nestlé said that it was “pleased with the decision” and “now looks forward to the decision of the UK High Court”. Mondélez International, which owns Cadbury, said in an emailed statement that the court’s ruling “is in line with our contention that the shape of the Kit Kat bar is not distinctive enough to be protected as a trademark”.
Nestlé won a UK Court of Appeal ruling in October 2013, blocking Cadbury from obtaining a trademark for the purple colour that it uses to package its milk chocolate.
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