In a decision issued in June the Advocate General (AG) of the
European Court of Justice concluded that the shape of
Nestlé's four fingers Kit Kat bar did not qualify for
trade mark registration under European law.
The AG's decision comes four years after Nestle filed a
United Kingdom trade mark application for the shape of the Kit Kat
bar. It's a further step in the process towards what looks
likely to be the refusal of registration of the shape by the United
That outcome was not guaranteed. The United Kingdom application
was initially accepted for registration by the United Kingdom Trade
Marks Registry, with opposition to registration taken up by Cadbury
Further afield the results are also mixed. Nestle successfully
registered the mark in Singapore (albeit to later lose the
registration in a successful invalidity action) and South Africa,
but was unsuccessful in Australia and New Zealand.
New Zealand 2002 – turning back the clock
A New Zealand decision on the registrability of the Kit Kat four
fingers shape was handed down some 12 years ago. As in the United
Kingdom the registry had accepted the mark for registration, with
Cadbury (and Horizon Biscuits) successfully opposing.
In his decision, the Hearings Office concluded that the mark did
not qualify for registration because:
The shape was one other traders would want to use in the
ordinary course of business without improper motives (indeed it
seemed Cadbury already had);
The evidence of use presented was not adequate to show that the
shape of the bar itself had come to act as a badge of origin - all
evidence being use in combination with KIT KAT and/or
Since then the New Zealand Court of Appeal has issued a
judgement on the registrability of a shape mark (a plastic
kiwifruit vine tie) which has provided further guidance on the
registrability of shape marks. In that decision, the court found
Largely functional shapes can qualify for trade mark
registration (the court didn't have to decide whether purely
functional marks were registrable);
Goods themselves can be registered as trade marks;
The inclusion of a brand name on the shape doesn't mean the
shape itself minus the brand cannot qualify for registration (the
key question being whether the shape has come to be used to
identify products of that shape as coming from one party).
Where does this leave us?
Nestle are trying to register the shape of their Kit Kat four
fingers bar so as to be in a better position to stop others
offering confectionary of the same shape. That monopoly right is a
Whether registration can be achieved is going to usually turn on
whether the evidence shows that the shape has come to act as a
badge of origin. Nestle have struggled to make out that the shape
of the bar on its own serves that function, in part because they
sell the Kit Kat bar wrapped and bearing considerable branding.
That said, each case is different. See
here if you want to read about an iconic chocolate bar shape
accepted recently in New Zealand.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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