KitKats, four-fingered innovation and trademarking

The humble KitKat is making media headlines thanks to some magical melting moments brought about by a Japanese café. The eatery in question is slotting chocolate fingers of all flavours within the folds of warm patisserie (full details here). This innovation is surely to be commended by fans of the globally popular snack but aside from making us hungry, reading about the ‘crokat’ got us thinking about Nestle’s famous four-fingered row.

If you’ve missed the entire four-finger trademark furore, the Court of Justice of the European Union (CJEU) recently issued guidance to the UK High Court on the interpretation of the law surrounding the registration of shape marks.

The questions answered were referred to the CJEU by Mr Justice Arnold, who is considering the registrability of the shape of the KitKat bar in Nestle’s long running attempt to trademark the shape of their four fingered wafer snack here in the UK.  We’ve spoken on the blog before about colour in the world of chocolate, covering some of the biggest sticking points within the sector and it seems the shape of chocolate is a similar sweet spot for IP contention.

Why does Nestle want to protect the KitKat?

The KitKat was originally the work of Rowntree & Co, with the shape of the bar coming before the name. Though Rowntree had been toying with products with names similar to the KitKat for some time (specifically boxes of chocolates rather than bars) the Kitat was originally called Rowntree’s Chocolate Crisp. A name change and lots of advertising later, the bar is not only one of Britain’s most loved snacks, consumers all over the globe regularly take a break with a KitKat, but when they do, is the shape really so significant? Nestle bought Rowntree in 1998 and filed to protect the shape of the chocolate bar as a trademark in 2010. This application within the UK market was turned down in 2013. If granted, Nestle may have been able to stop similar products being made by competitors.

The argument for and against

Nestle argues that the shape of the KitKat is distinctive enough to recognise without the red packaging or the name printed on the chocolate. At the opposite side of the argument, rivals Cadbury counter that the shape of the chocolate bar is merely the easiest way to put a wafer bar together. Over the course of the application Nestle has taken their argument to the High Court and various questions were referred to the CJEU. Nestle argue that they have submitted evidence that indicates a high degree of association between the shape and the product. One street survey showed that 90% referenced the word KitKat when shown a picture of the shape.

The KitKat trademark campaign takes a break?

The latest ruling made by the CJEU on September 16th is complicated, but in a nutshell stated that one of the three grounds of ‘absolute refusal’ for shape marks have to be ‘fully’ satisfied for an application to be refused. Those three grounds state that a trademark shall not be registered if it consists exclusively of:

  • the shape which results from the nature of the goods themselves;
  • the shape of the goods which is necessary to obtain a technical result;
  • the shape which gives substantial value to the goods;

In respect of the evidence of ‘distinctiveness acquired through use’ of the mark that Nestle had submitted the CJEU stated that:

“Through its distinctive character a trade mark must serve to identify the goods or services covered by that mark as originating from a particular undertaking, and thus to distinguish the goods or services in question from those of other undertakings”

The CJEU has been reported by the media as being a ruling against Nestle. However, this is not necessarily correct (we wonder if one or more PR companies might have encouraged this relatively one-sided reporting?)

In fact the ruling might be seen as being in favour of Nestle as it leaves open the possibility that the KitKat shape mark could be allowed registration by the UK High Court, which must now apply these guidelines and might allow registration of the KitKat shape as a trademark. It’s not clear that any of the grounds for absolute refusal are ‘fully’ satisfied so Nestle seems to be in with a chance.

Where do you stand on the KitKat debate? Do you think the bar’s shape deserves protection? Is the distinct colour or shape of your product fundamental to your business? Get in touch to discuss how London IP can help you put protection in place.