Candy bar maker Nestlé has recently lost an appeal to gain trademark protection for the shape of their famous KitKat bar.  In many cases, a particular shape can illicit the thought of an associated product. For example, the Coca-Cola bottle and Toblerone chocolate bar both have distinct and recognizable shapes.  As a result, both companies received trademarks for their unique shape.  Nevertheless, it is rare for a three-dimensional object to be granted trademark status. Trademarks have the potential to remain registered indefinitely, which could potentially create a long-term monopoly on a possibly functional shape.  In contrast, patents, which are designated for protecting functional products, have a limited term.  To trademark a shape, the law requires that it be distinctive enough to allow consumers to distinguish it from other products apart from any logos or brand name listed on the packaging.

Nestlé is trying to protect the shape of their KitKat bar, which has what some would call a distinctive four-fingered shape, in the United Kingdom. The KitKat bar was first introduced to the public in 1935 by Rowntree and was called the Chocolate Crisp. The shape has changed little since its introduction and was acquired by Nestlé in 1998. A Norwegian candy bar called Kvikk Lunsj (meaning “quick launch”) has existed in the UK market since 1937 and has a look very similar to the KitKat bar.

The UK has been the arena for a long battle between the Swiss company Nestlé and the United States company Mondelēz, owners of Cadbury. In 2004, Cadbury attempted to trademark the shade of purple used in the packaging for their Dairy Milk Bars. Nestlé challenged the trademark and the application was rejected by the UK Court of Appeal in October 2013.

In the latest case between the two companies, Nestlé is on the losing end of a seven-year trademark battle. In the recent case Société des Produits Nestlé SA – and – Cadbury UK Ltd, the UK Court of Appeal ruled that the four-finger design had “no inherent distinctiveness”. The basic test applied by the requires that, to be distinctive, the three-dimensional trademark application must be for a shape that “departs significantly from the norms or customs of the industry.” (Chocoladefabriken Lindt & Sprüngli AG vs. OHIM) The three appeals judges deliberated for months before issuing a ruling that found the shape was not a “badge of origin”.  Nestlé had appealed a lower UK court ruling that blocked the trademark registration and found that the shape was not distinctive enough to merit trademark protection and that such a designation would not comply with European law.

Appeal Court Justice Arnold stated that “it seems likely that customers rely only on the word KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the product. The fact that Nestlé ensured that each finger was embossed with the Kit Kat logo amounted to a clear recognition that consumers did not rely upon the shape in that way, and that they in fact relied upon the trade mark Kit Kat.”

The court also cited Nestlé’s advertising efforts stating “the shape of the ‘KitKat’ bar has not been used to promote or market ‘KitKats’ in recent times. It has nothing, therefore, to do with informed choices that consumers make between similar products.”

Although this ruling makes the candy bar company vulnerable to copycats, it is unlikely the company will given up their quest any time soon.  This is not the first time Nestlé has taken great efforts to gain trademark protection. The company spent more than 40 years trying to register the slogan “Have a Break” before finally giving up in 2006.

A Nestlé spokesperson suggested the company was not prepared to give up and were considering their next move. Nestlé  has the option to take the case to the UK Supreme Court. The spokesperson also noted that “Nestlé’s four-finger shape has been granted trademark registration in many countries of the world, for instance Germany, France, Australia, South Africa and Canada, further protecting it from imitations.”

Suiter Swantz IP is a full-service intellectual property law firm, based in Omaha, NE, serving all of Nebraska, Iowa and South Dakota. If you have any intellectual property questions or need assistance with any patent, trademark or copyright matters and would like to speak to one of our patent attorneys please feel free to contact us.