KitKat trademark battle: Why the advocate general gave four fingers to Nestlé

Swiss confectionery giant Nestlé has been dealt a blow in its attempt to register the shape of its famous KitKat chocolate bar as a trademark.

The advocate general of the Court of Justice of the European Union (CJEU), whose opinion (whilst not binding) is often followed by the court, has stated that Nestlé's trademark application should be refused. This will no doubt be sweet revenge for Cadbury which had previously had its application to register a particular shade of purple successfully thwarted by Nestlé.

So, on what basis is our favourite four-fingered friend being refused entry onto the trademark register when it has been shown that 90 per cent of survey respondents recognised Nestlé's famous chocolate bar as a KitKat? Indeed, many other 3D shape marks have been successfully registered previously – the most famous example perhaps being the Coca-Cola bottle.

Article 2 of the Trade Mark Directive (2008/95/EC) states that "A trade mark may consist of any signs capable of being represented graphically [..] including [..] the shape of goods or of their packaging.."

However, the KitKat shape mark was found to be 'devoid of distinctive character' by the Intellectual Property Office's hearing officer. This meant that registration was initially refused under Article 3(1)(b). Nevertheless, Nestlé sought to rely on Article 3(3) under which a lack of inherent distinctive character can be overcome if it can be shown that the mark has acquired distinctive character through use. However, the hearing officer determined that such distinctiveness had not been acquired. Nestlé appealed to the English High Court.

On appeal Nestlé argued the mark had acquired distinctive character. It contended that a significant proportion of consumers recognised the mark and associated it with the applicant's goods in the sense that, if they were to be asked who marketed goods bearing that mark, they would identify Nestlé.

However, Justice Arnold thought that the proper test was whether Nestlé could prove that a significant proportion of consumers relied upon the trademark (as opposed to any other trademarks which may also be present) as indicating the origin of the goods. Justice Arnold felt that this higher threshold was necessary as average consumers were not in the habit of making assumptions about the origin of products on the basis of their shape, especially in the absence of any graphical or word element.

Nevertheless, the judge recognised that the law is not clear on this point and sought the guidance of the CJEU.

Unfortunately for Nestlé, advocate general Wathelet agreed with the judge, stating that mere recognition was not sufficient and that the "issue is [..] whether the shape for which Nestlé seeks registration as a trademark, when used independently of its packaging or of any reference to the term ‘KitKat’, serves to identify the product, to the exclusion of any other trademark which may also be present as being, without any possibility of confusion, the KitKat wafer bar sold by Nestlé.."

As such, should the CJEU follow Wathelet's lead, it seems unlikely that the 3D KitKat mark will be able to clear this relatively high threshold and show that it had acquired sufficient distinctiveness. However, this should perhaps not come as a surprise as Lindt's bunny, reindeer and mouse-shaped chocolates have all also been deemed unregistrable.

Indeed, it is thought that this trend could be explained as an unwillingness by the CJEU to allow companies to monopolise particular 3D shapes especially, as in the case of KitKat, where the shape in question is not seen by the consumer until after the product has been purchased.

Dan Parkes is a trainee solicitor in the IP & Commercial Department at Wedlake Bell LLP

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