KitKat shape not eligible for trademark protection

Nestlé fails in its battle to protect the shape of its KitKat bar as a trademark, after High Court of England and Wales rules that the chocolate bar has failed to acquire distinctiveness through use. Novagraaf’s Claire Jones outlines the implications for brand owners.

Obtaining trademark protection of shapes is not as common or as simple as trademark protection for other types of signs, such as words, slogans or logos.

Registration limitations exclude shapes from trademark protection, if:

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

Shapes that are not excluded on these grounds can obtain trademark protection, but – as with trademarks in general – only if they satisfy criteria for distinctiveness. In practice, this is quite a hurdle as it can be difficult to argue that consumers recognise a shape as a distinguishing mark of a particular undertaking. Ideally, shapes need to depart significantly from the norm or customs of the sector in order to fulfil the essential function of a trademark of indicating a product’s origin.

Why KitKat’s four-finger shape falls short In 2010, Nestlé filed an application to register a trademark for its four fingered KitKat bar. As the application was for a shape mark, the (word) mark KitKat was not included in the application.

The UK Intellectual Property Office (IPO) originally accepted the application and registered the shape mark; however, competitor Cadbury’s opposed the registration. In the procedure that followed, the High Court of Justice of England and Wales referred the following questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling.

In essence, the procedure concerned the following questions:

• Is the shape of the KitKat bar excluded from trademark protection because one of the grounds for refusal is applicable? And, if the answer to that question is negative;
• Has the shape acquired a distinctive character through use?

Applying the grounds for refusal With respect to the first question, the CJEU heard arguments that the chocolate bar’s shape contained three essential features: one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result.

The court discussed that it is possible for the essential features of a sign to be covered by one or more grounds of refusal. It then went on to clarify that the grounds of refusal regarding the technical result must be interpreted as referring only to the manner in which the goods at issue function and not the manner in which they are manufactured. The court also clarified that registration may be refused only where at least one of those grounds is fully applicable to the sign at issue. The case was then returned to the UK courts for review.

A final refusal by the High Court of England and Wales Guided by the CJEU’s opinion, Mr Justice Arnold concluded that: “In order to demonstrate that a sign has acquired distinctive character, the applicant or trademark proprietor must prove that, at the relevant date, a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question (as opposed to any other trademark which may also be present).” (para 57)

In other words, to prove acquired distinctiveness, Nestlé must show that the relevant public recognises the shape in itself as originating from Nestlé. However, Mr Justice Arnold ruled that was only able to establish association, which was not sufficient to demonstrate the necessary acquisition of distinctive character. The shape was, therefore, deemed ineligible for registration and the appeal was dismissed.

Implications for trademark holders In effect, there was substantial evidence presented in the proceedings to show that consumers associated the shape of the bar with the KitKat brand, but not that consumers already relied upon that shape before purchase. Therefore, the main evidence point to come out of the proceedings is that the evidence must show that consumers perceive the trademark as indicating exclusive origin from one particular undertaking. However, the application of such a test was not made entirely clear by Mr Justice Arnold, and this point is likely to be contended in the future.

The bar for acquired distinctiveness of shapes has been set very high and consumers will be foremost in any analysis.

Claire Jones is a trademark attorney in the London offices of Novagraaf.