UK: In Counsel - Fingers Crossed: Is The Shape Of The KIT-KAT Bar Registrable As A Community Trade Mark?

Last Updated: 9 May 2013
Article by Jonathan Cornthwaite

Ever since the introduction of the Community Trade Mark (CTM) it has been possible to seek registration for (inter alia) "the shape of goods or of their packaging". Manufacturers have made good use of this entitlement over the past two decades to secure the registration of a wide range of 3D marks. Yet the confectionery industry has struggled to take advantage of this entitlement. Thus, in the last few years, Mars, Lindt and Storck have all failed in their respective attempts to register the shape of their confectionery as CTMs.

But Nestlé has managed to buck the trend, for, in a recent ruling won from an Office for Harmonisation in the Internal Market (OHIM) board of appeal, it succeeded in securing a ruling that the shape of its well-known four-fingered KIT-KAT bar was a valid CTM registration.1


In 2002 Nestlé applied to OHIM to register as a CTM for a range of class 30 goods a 3-D sign consisting of four trapezoidal bars aligned on a rectangular base (the Shape).  Although it initially objected to the entire application on grounds of non-distinctiveness, OHIM subsequently withdrew its objection to all of the goods in the specification other than chocolate, confectionery and candy, and the application achieved registration in 2006 for sweets, bakery products, pastries, biscuits, cakes and waffles. 

In the following year Cadburys applied to OHIM for a declaration that the registration was invalid, which was granted by the Cancellation Division in 2011.  Nestlé appealed and, in a decision of the Second Board of Appeal of OHIM (the Board) in December 2012 (the Decision), the appeal was allowed.

The Decision

Both of the principal issues in the Decision related to Article 52 ("Absolute grounds for invalidity") of the Community Trade Mark Regulation (CTMR).2  The major issue was whether or not the mark was "devoid of any distinctive character"  and, if so, whether that prohibition should be disregarded if the trade mark had become distinctive in relation to the goods for which registration had been requested in consequence of the use which had been made of it.   The other, and minor, issue was whether the mark was unregistrable on the grounds that it consisted exclusively of the shape of goods which is necessary to obtain a technical result.   We shall discuss each of these issues below.

Inherent distinctiveness?

Whilst acknowledging that it was not appropriate to apply more stringent criteria when assessing the distinctiveness of shape marks than in the case of other categories of marks, the Board recognised that the task of establishing distinctiveness for shape marks could be more difficult than for other categories.  Average consumers, it held, were not in the habit of making assumptions about the origin of products on the basis of their shape, in the absence of any graphical or word element.  Furthermore, it was not enough to show originality:  the shape in question must "differ substantially" from the basic shape of the goods.  And where low-priced goods were involved (like sweets, for example) consumers' attentiveness was low.

The hurdle to establish inherent distinctiveness in a case such as this was therefore high, and the Board found that Nestlé had failed to clear it.  In its opinion a trapezoid was a basic geometrical shape; the presence of four identical bars did not add any striking feature; and the mere fact that Nestlé had been the first in the market to use that shape did not per se make it distinctive.  In summary, the Board agreed with the Cancellation Division that the mark was devoid of inherent distinctiveness.

Acquired distinctiveness?

The Board held that, for the argument of acquired distinctiveness to succeed, the proprietor needed to evidence intense use of the mark, and to show that that use had enabled the sign to possess the central function of a trade mark, namely the function of indicating origin.  In other words, the proprietor had to show that a significant proportion of the relevant section of the public identified the goods as originating from a particular undertaking.

With non-word marks, the Board explained that the assessment of distinctiveness would be the same throughout the EU, in the absence of concrete evidence to the contrary.  But it went on to rule that it was unnecessary to establish this distinctiveness "in every nook and cranny" of the EU.  Furthermore, the EU would be assessed not as it is today, but as composed at the time of the filing date of the mark.  It followed from the latter that almost half of the current member states could be disregarded for evidentiary reasons, a point that substantially assisted Nestlé in its task.

Applying the above law to the case in issue, the Board accepted that in the five largest member states (France, Italy, Germany, Spain and the UK), which together represented some 80% of the (then) EU's population, Nestlé's surveys had shown a spontaneous recognition of the Shape in excess of 42%.  The Board also noted that there had been high degrees of recognition in other member states, and that the Shape had been used by Nestlé as a trade mark in almost the totality of the EU's then territory.  On the basis of this evidence, the Board overruled the Cancellation Division's decision, and found that the mark had indeed acquired distinctiveness for use in the EU. 

Technical result?

Cadburys had argued that the joinder of the four bars through a thinner base contributed to making the portioning of those bars easier, that this was "a technical result", and that the mark was therefore unregistrable.  But the argument was swiftly rejected by the Board.  It did not consider that any contribution made by the Shape to the easier portioning of the product constituted the performance of a technical function.  And the Board considered that any such solution might in any case have been incorporated without difficulty in 3-D marks that did not include a trapezoidal shape of each bar.


The Decision represented sweet revenge for Nestlé which, only a couple of months earlier, had been thwarted in its opposition in the English High Court to Cadburys' UK trade mark application to register a purple colour mark for chocolate.  But, in the circumstances,  this is unlikely to be the last legal battle between the two competitors!


1. Société des Produits Nestlé SA. v Cadbury Holdings Limited, Case R513/2011-2, decision of the Second Board of Appeal of OHIM, 11 December 2012.

2. Council Regulation 40/94/EEC, repealed and codified by Council Regulation 207/2009/EC.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.