To a world-famous brand, few things are more important than a trademark. Trademarking a name, symbol or logo identifies your ownership of your products and protects your intellectual property. But there are instances in which big companies can lose their bids to trademark iconic parts of their branding. Here are three such instances.
Adidas’ Three Stripe Symbol
Adidas is well-known for their slanted, three-striped logo. However, an EU court ruled on June 2019 that it was not “distinctive” enough. According to the ruling, Adidas did not “prove that the mark has acquired, throughout the territory of the EU, distinctive character following the use which had been made of it”.
The ruling is just the most recent update in a long-running trademark dispute between Adidas and Shoe Branding Europe BVBA, a Belgian company that features two slanted stripes on its shoes.
The dispute started in 2014, when Adidas was granted a trademark on “three parallel equidistant stripes of identical width, applied on the product in any direction” on their apparel. However, in 2016, Shoe Branding Europe BVBA applied to the EU Intellectual Property Office (EUIPO) for this trademark to be withdrawn. EUIPO annulled the 2014 trademark on the grounds that it was devoid of any distinctive character and should not have been registered in the first place.
This new ruling isn’t expected to affect Adidas that much, though. As Adidas has said in a statement, “This ruling is limited to this particular execution of the three-stripe mark and does not impact on the broad scope of protection that Adidas has on its well-known three-stripe mark in various forms in Europe”. Adidas can still appeal this decision.
Cadbury’s Purple Packaging
Since 1995, Cadbury has claimed the rights to the colour purple – particularly Pantone 2685C – but now, in 2019, following a long-running legal battle to protect the distinctive shade, its parent company Mondelēz International has given up its trademark.
The original 1995 application said, “The mark consists of the colour purple (Pantone 2685C) as shown on the form of the application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”
The 1995 trademark was only registered for “chocolate in bar and tablet form”, so, in 2004, when the company wanted their line of drinking chocolates, cakes and broader chocolate range to also use the colour purple, they applied for a new trademark. This new trademark used the same description as the 1995 one.
Nestle, their main competitor, opposed this application, arguing that the particular shade of purple had no distinctive character. The UK Court of Appeal agreed with Nestle and rejected Cadbury’s application in 2013. The Court’s decision hinged on the wording of the application, particularly the usage of the word “predominant”, which they felt was too broad.
After the decision, Cadbury realised that its existing 1995 UK registration became vulnerable to invalidation since it used the same wording as the 2004 application. They returned to court in 2018, appealing to remove the application’s second mark which used the term “predominant”. They lost the case since the Court refused to accept that Cadbury’s registration was for a series of two different marks.
This loss placed Cadbury’s trademark in an uncertain position. The company had two options: drop the trademark or apply for a fresh one. They decided to drop it. Still, they will continue to protect what they believe is a distinctive trademark, using unregistered rights.
KitKat’s Four-Finger Shape
Since 2002, KitKat maker Nestle has been trying to establish a European trademark for their four-finger shaped chocolate bar. Unfortunately, in 2018, the European Court of Justice in Luxembourg ruled that KitKat’s shape is not distinctive enough to be trademarked.
The court sided with the makers of Kvikk Lunsj, a Norwegian chocolate bar that is shaped almost exactly like the KitKat bar. Due to this, its maker, Mondelēz International, can market and sell the Kvikk Lunsj brand more widely throughout the EU. The chocolate bar first hit the shelves two years after the KitKat did in 1935.
This decision is the latest in the decade-long legal battle between Nestle and Mondelēz International, which began when, in 2006, Nestle managed to secure a trademark for KitKat’s shape. Kvikk Lunsj’s then-maker, Cadbury (now owned by Mondelēz International) challenged this trademark, and in 2016, Nestle was stripped of it. Nestle appealed this decision, but was rejected in 2018.
Nestle vows to keep fighting to secure their trademark. They plan to ask the appeals board to re-examine the evidence.
Big brands are not immune to issues with their trademarks. If you’re having problems with registering your trademarks, you can rely Pinnacle TMS to help. We are Australian trademark specialists. Book your today complimentary consultation to find out how we can assist you.