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Nestle Again Fails to Secure Trade Mark Protection for KitKat

Written by Fozia Cheychi on 17 May 2017

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This means that Nestle has failed again to secure trade mark protection for the shape of its KitKat bar- the popular four-finger snack.

In January, last year in the decision handed by the Court of Appeal, Mr Justice Arnold had commented that the KitKat shape had not acquired distinctive character and further Nestle had not promoted the shape of the four-finger bar as a selling point due to the fact that the packaging hid the shape of the design.

Nestle appealed the January decision. It argued that a “substantial proportion” of the relevant consumers, when presented with the 3D shape, identified it as a KitKat and that when they identified the shape, they meant a “specific product from a specific source”.

Today’s High Court decision upholds the High Court ruling.

Chancellor of the High Court Lord Justice Vos, Lord Justice Kitchin and Lord Justice Floyd have issued a unanimous opinion.

Kitchin commented: “We are concerned here with a mark, the 3D shape of a chocolate product, that has no distinctiveness.” He stated that consumers are not likely to take it as a badge of origin, in the way that they would a newly coined word. He further said “Now assume that products in that shape have been sold on a very large scale under and by reference to a brand name which is inherently highly distinctive”. He added “the shape should be assumed to have become well-known in this way”. He continued; “That does not necessarily mean that the public have come to perceive the shape as a origin such that they would rely upon it alone to identify the product as coming from a particular source.” He further added “that the public may regard the shape as a characteristic of such products or find that it brings to mind the product and brand name with which they have become familiar.”

In Kitchin’s opinion these kinds of recognition and association do not amount to distinctiveness in trade mark cases.

A spokesperson for Nestle has stated that the company was disappointed by the judgment and is considering next steps. It was further stated “This judgment does not mean that our four-finger shape is now free for use in the UK or elsewhere. KitKat is much loved around the world and its four finger-shape is well known by consumers”.

Nestle may now appeal to the UK Supreme Court.

A spokesperson for Mondalez- the owner of Cadbury commented “We are pleased with the Court of Appeal’s decision today and welcome their conclusion. As we have previously stated, we do not believe the shape of the KitKat should be protected as a trade mark in the UK.”

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