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Have a break. Have a trade mark?

Written by Alex Baker on 26 July 2018

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The European Court of Justice (ECJ) has dismissed an appeal by Kit Kat creator Nestlé in regards to their desire to trade mark the shape of their chocolate treat within the EU.

Nestlé has been embroiled in a trade mark battle for the four-bar shape for over a decade, but this decision marks the end of the very expensive process that has seen opposition from rivals like Cadbury and Mondelez, which owns a similar looking four-bar treat in Norway called Kvikk Lunsj (‘Quick Lunch’).

The EU Intellectual Property Office (EUIPO) originally granted protected status for its design in 2002 but this has been continually contested since then.

In its ruling the ECJ said that the shape of the Kit Kat, without the Kit Kat logo branded on the top of each bar, was not proved to be sufficiently distinctive enough in character – as per Article 7(1)(b) and Article 7(3) of the EU trade mark regulation – in all of the member states that it seeks a trade mark in. In other words, it was decided the shape alone was not inherently distinctive and also did not completely distinguish the product as a Kit Kat as made by Nestlé throughout all EU member states. The court said the chocolate bar was not established enough throughout all the EU member states to merit its shape having trade mark protection within all of the states. Thus, this ruling means that it is not enough that a mark is iconic in only part of the EU if it desires protection throughout the entirety of the EU; an impossibly high standard argues Nestlé.

Regardless, Kit Kits are therefore now not entitled to protection from copycats who also produce similar goods of a similar shape, so be aware that off-brand chocolate treats of a similar shape to a Kit Kat are liable to be introduced to your local supermarket.

Nestlé however has stated that this is not the end of its case, as they are insistent that the Kit Kat’s shape deserves protection. It will attempt to return to the EUIPO with greater evidence that the shape is distinctive within additional states of the EU that it did not previously have distinctive character in. It can do this by targeting fulfilment of Article 7(3) of the EU trade mark regulation: proving that the shape has acquired distinctive character through use in at least one additional member state, or in other words that enough of an association between the shape of the product and the Kit Kat brand is made within consumers’ minds. It therefore awaits to be seen what the ultimate outcome of this case will be.

 

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