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 firstname.lastname@example.org. You can also book a consultation via our website for a time to suit you today.