November 19, 2018
Originally posted 2018-11-19 11:19:54
Kelsey Laugel | www.amdlawgroup.com
The Advocate General of the Court of Justice of the European Union (EU) advised the European Court that Nestlé’s attempts to trademark the Kit Kat’s distinctive four-fingered shape does not comply with EU law. This opinion is likely to effectively end Nestlé’s attempts to trademark the shape of the candy as European Court judges usually follow the opinions of advocate generals.
This is merely the latest setback for Nestlé in a continuous battle between it and Cadbury, now owned by Mondelez, over trademarking their food in the UK. The case dates back to 2010 when Nestlé first sought to register the shape of the four-fingered wafer in the UK, arguing that the candy bar’s shape and the resulting ability of consumers to “snap” the four wafers apart had become distinctively associated with the Kit Kat. However, rival Cadbury quickly moved to challenge the registration, which resulted in the UK Intellectual Property Hearing Office’s rejection of the trademark for lacking inherent distinctive character.
Cadbury’s action in the current case is likely due to Nestlé’s previous interference in 2004 with their attempts to trademark the distinctive purple color, specifically named Pantone 2685C, used in the packaging of their chocolate products. After several years of hearings, Nestlé effectively thwarted Cadbury’s attempts to trademark the color through the Court of Appeals in 2013.
While the decision is not yet final, Nestlé must prove that the Kit Kat’s shape is at a level of distinctiveness much greater than mere recognition by consumers in order to succeed in its trademark attempts. If its application does prove successful, Nestlé will have the power to prevent competitors from making rival candy bars of the same size and shape. In practice, shapes are difficult to prove sufficiently distinctive because it is hard to show that consumers see the shape of the product alone as an indicator of the brand as opposed to the label. Regardless, Kit Kat, as the fifth most popular chocolate brand in the UK, remains an enormously popular candy, and the outcome of the battle will prove an important development in both the confectionary industry and the direction of trademark law.