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 Kingdom courts.

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 UK.

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 packaging.

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 that:

  • 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 valuable one.

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.