Monday 24 October 2016

Nestle to appeal after four-finger KitKat trademark bid rejected

Published 20/01/2016 | 14:31

The judge considered the issues relating to the 'distinctive character' of a four-finger Kit Kat
The judge considered the issues relating to the 'distinctive character' of a four-finger Kit Kat

Nestle bosses say they aim to appeal after their bid to register the shape of four-finger KitKat as a trademark was given the thumbs down by a High Court judge.

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Mr Justice Arnold analysed the sweet giant's application after rival Cadbury objected.

He considered issues relating to the "distinctive character" of the "three-dimensional shape" at a High Court hearing in London earlier this month and ruled against Nestle on Wednesday.

Nestle said the KitKat shape was "iconic" and deserved protection.

A spokesman said the firm was "taking the necessary steps to appeal".

Legal experts said the ruling could have implications.

Lawyer Georgie Collins, who specialises in intellectual property cases and is based at law firm Irwin Mitchell, said rivals could not use the KitKat name.

But she said the ruling could lead to other firms producing similar-shaped chocolate bars.

"In the highly competitive arena of consumer goods, the shape of a product can be a market differentiator and a way of distinguishing your product from that of another brand," she said.

"This decision illustrates the difficulty of protecting trademark protection for shapes, even where the shape in question has exceptional recognition amongst consumers.

"In this case, 90% of survey respondents mentioned the KitKat brand when shown a picture of a four-fingered chocolate bar, but this was not enough to grant Nestle a monopoly over the four-finger shape."

She said the judge had concluded that in order for a trademark to be granted it had to be shown that a "significant proportion of the public would rely on the shape as opposed to any other trademark".

"This could result in competitors producing similar-shaped products," she added.

"They would need to avoid using any other KitKat related trademarks otherwise they may face claims of trademark infringement and/or passing off.

"However, in light of this decision, using a similar-shaped product alone but with different branding and a name could be enough to get away with it."

Sharon Daboul, a trademark specialist at EIP law firm, said: "The question is whether a consumer would look at the four-finger chocolate bar and straight away know it was a KitKat, without the logo or wrapper.

She went on: "Nestle had to prove that it was the unbranded shape alone that consumers relied upon to know the product. Proving that consumers associated the shape with a KitKat bar was not enough; consumers had to rely on the shape as an indication of origin and the onus was on Nestle to have shown this in the earlier evidence rounds.

"This seems to be a common-sense decision and perhaps public policy also played a part. Allowing registration of the KitKat shape would have given Nestle a valuable monopoly and competitive advantage."

Cadbury bosses said they were pleased with the ruling.

A spokeswoman added: "(It) is in line with our contention that the shape of the KitKat bar is not distinctive enough to be protected as a trademark."

She said she could not say whether Cadbury had plans to produce a chocolate bar in a four-finger KitKat shape.

Cadbury and Nestle have already been embroiled in a dispute over the use of a particular shade of purple.

Four years ago a High Court judge ruled in favour of Cadbury after bosses applied to register a purple chocolate wrapper as a trademark.

But in 2013 the Court of Appeal overturned the High Court decision.

Three appeal judges ruled that the Cadbury claim lacked ''specificity'' and did not comply with ''requirements for registration''.

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