Epic power battles are not isolated to the world of George R Martin.
In a bitter rivalry comparable to the conflict between Houses ‘Lannister’ and ‘Stark’ of popular TV series, Game Of Thrones, Nestle and Cadbury have been engaged in a legal conflict spanning almost as long as A Song Of Ice And Fire.
It started in 2004 when Nestle contested an application made by Cadbury to trademark the purple colour of its packaging. It continued in 2010 with a counterattack from Cadbury which sought to block Nestle’s attempt to trademark the shape of its four-fingered chocolate bar.
Now, 10 years later, the latest development has seen the Court of Justice of the European Court rule against Nestle’s trademark application.
The attempt made by Nestle to register the shape of its Kit Kat bars in the UK has been undertaken to prevent rival manufacturers from producing a similar product.
The Colour And The Shape
It is rare for businesses to successfully trademark protect a shape.
After 14 years of fruitless attempts, Lego lost a legal battle to trademark the shape of its highly recognisable building brick in an EU-wide trademark.
Under EU law, to successfully trademark the shape of a chocolate bar, Nestle would need to prove that the shape of the Kit Kat is integral to immediate consumer recognition of the brand.
In submissions to the court, Nestle argued that over a period of 80 years of being manufactured and widely consumed by the public (40 million pounds worth are sold each year in the UK), that the shape of the four-fingered chocolate bar is synonymous with the Kit Kat brand and is so unmistakable that it should warrant trademark protection as distinct under the law.
In a survey conducted by Nestle, 90% of people were able to identify the chocolate bar as a Kit Kat without seeing a brand name or the red and white packaging.
However, the definition of a trademark is that it must differentiate the goods and services provided by other companies.
The EU’s Trade Mark Directive states that shapes or other signs that are capable of being represented graphically can qualify for trademark protection. This is in cases where the shape is capable of distinguishing one company’s goods or services from its competitors.
The court said that:
in order to obtain registration of a trade mark which has acquired a distinctive character … the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company.”
It is not possible to register a trademark where the nature of a product determines its shape or where that shape is required to achieve a technical result.
In its judgement, the Court of Justice of the European Court first asked whether Kit Kat chocolate bars take their shape as a result of a technical function. The reason for this is to ensure that businesses cannot monopolise technical features of products when those features are likely to be present in the products of competitors.
Kit Kat bars have three essential features. Their shape originates from the nature of the shape of moulded chocolate bars and is also necessary to obtain two technical results:
- the breaking of the bars; and
- determination of portion size.
After 5 years of attempts to register the shape of Kit Kat, the Court of Justice of the European Court determined, especially in the light of similar products on the market, that the shape of Nestle’s chocolate bar does not differentiate the brand sufficiently to be trademarked.
A decision by the advocate general of the Court of Justice of the European Court said:
Nestlé’s attempts to trademark the Kit Kat shape in the UK do not comply with EU law. As a result, Nestlé may now have to face competition from rivals making copycat Kit Kats – chocolate bars the same shape and size as the bars advertised for decades under the slogan “Have a break, have a Kit Kat”.
The case will now go back to the High Court for final ruling. However, given the determination of the European Court, it will interesting to see how Nestle will make its case.
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