KitKat Shape Mark Foiled Again

Nestlé couldn’t catch a break with its KitKat Shape trade mark.  Nestle’s shape trade mark for its famous four fingered chocolate bar has been quashed by the European Intellectual Property Office.

Nestlé filed a shape trade mark application in 2002 with the European Intellectual Property Office, in relation to which Cadbury (now Mondelez) sought a declaration of invalidity.

Mondelez makes the chocolate bar Kvikk Lunsj which has a similar four finger shape and it wishes to continue using the shape in the European Union (EU) without any fear of trade mark infringement.

In successfully invalidating the trade mark, Mondelez demonstrated the KitKat shape trade mark:

  1. was not inherently distinctive;
  2. had not acquired a distinctive character through use;
  3. was a shape resulting from the nature of the goods themselves; and
  4. was a shape which was necessary to obtain a technical result, namely for ease of dividing the chocolate into portions.

Nestlé is currently considering further steps, and it’s likely the chocolate giant will attempt to overturn the decision at some point in the future.

While Nestlé has not had the same struggle in Australia, it is clear from their European battle that registering shape trade marks can be a long and difficult process particularly when proving a shape trade mark is distinctive.

Before registering a shape trade mark it is important to consider whether the shape itself:

  • distinguishes the commercial origin of your product either inherently or through evidence of use;
  • is a technical or design feature which has a specific function;
  • has sufficient aesthetic features that are not functional;
  • is one which other traders are likely to want to use in their business; and
  • most importantly, is used (and promoted) as a trade mark.

We’ve previously secured registration for Australian shape trade marks, including the shape of a cross-section end view of sheet piling, and the shape of an orthodontic device container.  For more information about registering a shape trade mark (or any non-traditional trade marks) in Australia, please contact Mark Metzeling from our Intellectual Property team.

This article was written by Mark Metzeling, Special Counsel – Commercial and Intellectual Property and Yanery Ventura Rodriguez, Law Clerk.

Image by Evan Amos and used under creative commons licence.