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KitKat-feature

UK Courts Refuse to Trademark KitKat’s Shape

Category: Trademark Information

Nestle has lost yet another round of its long-running battle to trademark the KitKat design in the UK. While the word ‘KitKat’, its packaging and the slogan ‘Have a Break’ have been registered as trademarks in the UK, the shape of the chocolate itself does not.

The confectionery multinational first attempted to trademark the shape of its chocolate in 2010 but was promptly thwarted by Cadbury. Both companies have been in an ongoing dispute over trademarks since Nestle opposed Cadbury’s attempts to trademark the purple colour used in the packaging for Dairy Milk.

To qualify for registration, trademarks have to be distinctive. The Court of Appeal ruled that the design of KitKat was not ‘distinctive enough to warrant a trademark’ and to allow it would not comply with European law.

Trademarking Shapes and Colours

Trademarks are commonly names, logos and sound pertaining to specific goods and services. Trademarking colours and shapes is more complex and in many cases, have been unsuccessful. Such was the fate of companies like Lindt, which lost the bid to trademark its chocolate bunny wrapped in gold foil, and Rubik, which failed to win EU trademark protection for its cube-shaped puzzle. Nestle blocked Cadbury’s efforts to trademark the specific shade of purple for Dairy Milk.

The results, however, weren’t as bad for products like Toblerone, whose triangular shape is presently trademark protected. Coca-Cola also succeeded in claiming exclusive rights to its curvy, contoured glass bottle in 1980.

The question is, where did Nestle fail and why did Toblerone win?

Nestle: What Went Wrong

The UK court motioned that KitKat’s design, marked by rectangular bars with breaking grooves, was not distinctive enough.

The latest ruling stated that the four-finger design had ‘no inherent distinctiveness’. While the public may associate the shape with KitKat, it does not mean that consumers perceive the shape as a ‘badge of origin’ that they can use solely to identify the product and its source.

The consumers may simply regard the shape as a characteristic of the product, which would aid in recognition. The shape may also remind them of the brand name that is already familiar to them.

This type of recognition and association is insufficient to reflect the product’s inherent distinctiveness for trademark purposes. Moreover, the court expressed that if Nestle had a monopoly of the four-finger shape, it would be unfair to other confectionaries, since Nestle had never advertised KitKat for its shape alone.

Another argument raised is the existence of a chocolate bar called Kvikk Lunsj, a Norwegian product that has been present since 1937. It uses the same four-finger design and is nearly identical to KitKat. Kvikk Lunsj is also owned by Modelez, the parent company of Cadbury.

Toblerone: What Went Right

The Toblerone shape is pivotal to the company’s advertising, which emphasises the use of triangular honey from triangular bees. Meanwhile, Coca-Cola’s bottle was so prominent in its ads that people could identify it as a Coke bottle without the label. In both brands, the shape is utilised directly as a selling point – which Nestle has failed to do.

The ruling against KitKat shows that shape marks will be increasingly harder to obtain, as more brand owners push the boundaries to get as much protection as possible. Trademarks can potentially last for as long as the brand is alive, so for many companies, they are a truly significant measure of protection.

Let Us Help

At Pinnacle TMS, we recognise the stress and challenges involved in trademarking a brand, whether it’s a business name or product name or logo.   That’s why we are here to help. Our trademark specialists will take the hassle and headache out of the process and lead you through the maze that trade mark registration can be.

For any enquiries regarding the trademark registration process or our services, call +61 2 9520 4366 or email info@pinnacletms.com.au.   You can also book a consultation via our website for a time to suit you today.

ikea-image

IKEA’s Trademark Suit Loss Against Aikya Global: What Really Happened?

Category: Trademark Information

Trademarks have always been a cause for concern amongst corporations and start-up companies alike. Recent news swept the trademark industry in India when a district court in New Delhi dismissed a violation case filed by IKEA against Bengalaru-based consulting company Aikya Global.

IKEA is a well known multinational company and one of the world’s largest home retailer, producing ready-to-assemble furniture and kitchen appliances. Aikya Global, on the other hand, is a growing private consulting and service organisation that partners with businesses from all over the world.

The case involved a suit that accused Aikya Global of allegedly coming up with a brand name with phonetic resemblance to that of the Swedish retailer. Although there were scarce statements from both parties, the lawsuit was a controversial case in India.

Boiling Trademark Concerns

This was not the first time IKEA made headlines regarding trademark issues.

Back in 2013, IKEA took legal action over more than a handful of Indian companies, which included human resources firm Ikya Human Capital Solutions and the aforementioned Aikya Global. The multinational retailer was fearless in challenging the companies in court over trademark infringement, receiving ex parte injunction against them.

The allegation stated Aikya had ‘copied and imitated’ the retailer’s trademark and, according to the legal documents, the result was ‘deceptively similar’ to IKEA. While Aikya Global had initially surrendered to the lawsuit and amended their name to Ajira Global, the New Delhi court had taken back the injunction in June 2015 and ruled in favour of the local company.

Causing Conflict

IKEA sees the market in India as crucial to its growth and development, as does many other companies wishing to take advantage of the potential in India. A government approval for the largest foreign direct investment in single brand retailing was granted to the company, allowing them to set up 25 more large stores, each carrying thousands of furniture pieces. The estimate for the investment was around Rs 10,500 crore.

The Swedish retailer had plans to open its inaugural store in Hyderabad later in 2017, while another branch was in the works for Mumbai. The dismissal of the case comes at a critical time and could have some impact upon the agreed trade and investment deal between Ikea and the Indian government. However it may be the case that a resolution has already been agreed between the parties involved and that the court’s ruling is now a moot point.

The Importance of a Trademark

This incident is just one of many high profile trademark disputes and just goes to show that a trademark is more than just stamping your business with a branding iron. Whether you own a start-up company or a long-term venture, securing your trademark not only provides ownership of a brand but is one of the most effective and valuable marketing tools for businesses both in Australia and around the world.

If you have questions about the trade mark registration process or require professional assistance in pushing your trademark application forward, find out how Pinnacle TMS can help you. Visit Pinnacle TMS at pinnacletms.com.au to book a consultation. You can also email us at info@pinnacletms.com.au or call +61 2 9520 4366.

Trump’s Trademark Triumph

Category: Trademark Information

Donald Trump may have won the election but that is not the only thing that he has won lately.

 Trump has recently been awarded 38 new trademark registrations in China.

 The Chinese trademark system doesn’t require any evidence that the applicant owns that trademark or have used it previously. They employ a “first to file” system in which the first person to file a trademark application has priority.

 This now means that Trump has more than 100 trademarks in China, including 35 that were approved before he became the US president.

 This recent approval of Trump trademarks from China has raised some eyebrows with Senator Ben Cardin even accusing China of “trying to curry favour with the president of the United States.”

 Dan Plan, a director at Simone IP Services, has also commented, “For all these marks to sail through so quickly and cleanly, with no similar marks, no identical marks, no issues with specifications – boy it’s weird.”

 However, China’s foreign ministry spokesman Geng Shuang objected to these claims, stating that every trump Trademark was received and managed “in accordance with the law and regulation.”

 Spring Chang is a founding partner at Chang Tsi & Partners, a Beijing law firm that has previously represented the Trump Organisation has refused to comment specifically on Trump’s trademarks but she added, “I don’t see any special treatment to the cases of my clients so far.

 “I think they’re very fair and the examination standard is very equal for every applicant.”

 There are currently no plans for Trump to launch new products or services using the trademarks. Rather, this appears to be a defensive move to protect his brand and intellectual property in China.

 Several of our Australian clients have had us file applications for their brands in China and we are hoping for the same results as Donald Trump’s applications.

Louboutin Loses Case to Trademark Its Famous Red Soles in Switzerland

Category: Trademark Information

When you hear the name “Louboutin” what do you immediately think of?

Most people will say it is their trademark red soles.

The only problem is that Christian Louboutin was unable to obtain a registered trademark for these red soles in Switzerland.

The Parisian footwear brand has been turned down by the Federal Supreme Court of Switzerland in Lausanne to obtain federal trademark protection for its red soles. Although it is currently trademarked in the United States, China, Russia and Australia, the court ruled that it does not automatically mean that it is entitled to the same trademark rights in Switzerland.

This is not the first time that the footwear brand has been engaged in a trademark battle.

In 2011, Louboutin initiated a legal battle against Yves Saint Laurent (“YSL”) over their footwear collection that featured shoes that were in the colour red, including the sole. While Louboutin claimed that YSL was liable for trademark infringement and counterfeiting, false designation of origin, unfair competition and trademark dilution, a New York federal judge denied this and Louboutin lost the case.

However, the brand was able to keep its trademark for the red sole in the U.S. after YSL filed a counterclaim based on the grounds that the red sole trademark should be cancelled because it was merely ornamental and was not distinctive enough, hence making it ineligible for trademark protection.

There were certain limitations placed on the trademark, however, as the court ruled though, that the trademark only applied in circumstances where the red sole contrasted to the rest of the shoe.

Harley-Davidson Sue Urban Outfitters for Trademark Infringement for the Second Time

Category: Trademark Information

Urban Outfitters have found themselves being sued for trademark infringement by Harley-Davidson – again.

Harley-Davidson have alleged that the popular clothing brand have violated their trademark rights for the second time. The items in question are the Urban Outfitter’s “FPV HARLEY BODYSUITS”. As a collective, these bodysuits are named, “Infringing Bodysuits”.

Harley-Davidson have several trademark protections including their full-name and the independent word “Harley”. The company alleged that the brand “uses and has used the Harley-Davidson marks in a variety of unauthorized ways that falsely suggest and are likely to create the mistaken impression that [Urban Outfitters’] products come from or are authorized, approved and/or licensed by Harley-Davidson when they are not.”

They state that “…some of the Infringing Bodysuits are made from genuine Harley-Davidson products that Defendants have altered and reconstructed into new products that bear the Harley-Davidson trademarks [and that] some of the Infringing Bodysuits appear to not be genuine Harley-Davidson products and do not bear any of the Harley-Davidson trademarks, but Defendants have sold these products with tags, labels, receipts, and/or packaging that bear the HARLEY mark and falsely suggest that the Infringing Bodysuits are Harley-Davidson products.”

This is not the first time that Urban Outfitters have found themselves on the receiving end of a Harley-Davidson lawsuit. In 2014, Urban Outfitters were accused of violating Harley-Davidson’s trademarks by selling altered, such as cut-up or shredded, versions of their apparel products.

Subsequently, Harley-Davidson state that by stocking and selling the FPV HARLEY BODYSUIT, Urban Outfitters are directly violating the settlement terms from their 2014 lawsuit in which they “agreed that it would not knowingly make, promote, sell, or distribute Harley-Davidson apparel products that have been altered or reconstructed.”

The company are seeking a court order that prevents Urban Outfitters from selling products that contain any of their protected trademarks as well as monetary compensation for any profits that they may have made from these products in question.