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Nestle takes a break from trade mark protection

Written by Samuel O'Toole on 01 August 2018

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Nestle recently lost its lengthy battle with the European Union Intellectual Property Office (EUIPO) to register the shape of its KitKat bar as a European Union trade mark. The battle had been ongoing for many years, and had reached the EU’s highest court, the European Court of Justice (ECJ).

In 2006 Nestle was granted an EU trade mark by the EUIPO for the shape of the KitKat bar. This registered trade mark status was founded upon the fact that the KitKat had acquired distinctiveness in 10 EU jurisdictions: Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the UK.

In 2007 things began to melt for KitKat when Mondelez International, then Cadbury Schweppes, filed an action for invalidity against Nestle’s KitKat trade mark. In 2012 this action failed. However, in 2016 the EU General Court annulled the EUIPO’s decision. The reasoning for this annulment was the fact that whilst the KitKat shape was distinctive in a number of EU jurisdictions, it was not distinctive in all EU jurisdictions and the EUIPO should have taken this into account.

This decision of the EU General Court was subsequently appealed by Nestle and the EUPIO and the ECJ found that the decision valid. Accordingly the KitKat EU trade mark was to be annulled. 

Although, this doesn’t stop the KitKat shape from living on as a registered trade mark, there is nothing to say that Nestle cannot seek to obtain national trade marks for its KitKat shape.

The decision of the ECJ is a big one as it means that acquired distinctiveness should be present in all EU member states. On the flip side, if attacking an EU trade mark registration there is no need to do so in each individual EU member state.

Moving away from KitKats, the food industry has a long history of intellectual property.

In 1974 a patent was filed for a “saddle shaped” potato crisp. The patent disclosed a process whereby a “dough sheet so formed can be cut into elliptical pieces having the approximate size and shape of sliced potatoes.” – it was of course the Pringle.

Chocolate is certainly capable of being a trade mark, in 2012 a trade mark was granted for “a configuration of a candy bar that consists of 12 equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle.” – it was for the shape of the Hershey chocolate bar.

In 1977 the shape of a bottle was successfully registered as a trade mark – it is the iconic Coca-Cola Contour bottle.

In 1990 a food product created what is now known as the “classic form” of passing off test. In the case of Reckitt & Colman Products Ltd v Borden Inc [1990] Lord Oliver described the classic trinity for passing off in what is more commonly called the ‘Jif Lemon’ case. In this case, Reckitt marketed and sold lemon juice in a plastic lemon shaped bottle and successfully injuncted Borden from doing the same. This was based on Reckitt’s goodwill in the ‘Jif Lemon bottle’.

Some food for thought to keep you going!

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