Nestlé would just like the UK IPO to give them a break

Cadbury has successfully blocked a UK trade mark application by Nestlé for the shape of their KIT KAT four fingered chocolate bar

Nestlé had applied in the UK for the above mark in respect of various goods in Class 30 ranging from chocolate products and chocolate confectionery to pastries, cakes and biscuits. 

Cadbury filed opposition to the application on a number of grounds, including:

(i) the mark applied for consisted exclusively of the shape of the goods which was necessary to obtain a technical result; and

(ii) the mark is devoid of distinctive character.

Did the mark consist exclusively of the shape of the goods which was necessary to obtain a technical result?

Having heard from witnesses for both parties who had given evidence about the functional aspects of the shape represented by the mark, the Hearing Officer concluded that:

1.  The basic rectangular ‘slab’ shape represented by the mark is a shape which results from the nature of moulded chocolate bars or moulded chocolate biscuits sold in bar form;

2.  The presence of breaking grooves is a feature which is necessary to achieve a technical result;

3.  An angle of more than 8-10 degrees for the sides of the product and for the breaking grooves,  is as a result from the nature of moulded chocolate products and the depth of the grooves is necessary to achieve a technical result; and

4.  The number of breaking grooves and fingers is determined by the desired portion size.

Nestlé tried to argue that the shape of the product was for aesthetic design however, the Hearing Office dismissed this point on the basis that the goods are packaged in such a manner that the consumer does not see the shape of the product until it has purchased the same.

Furthermore, the fact that the product is designed to be broken up and eaten is a technical function which Nestlé promotes by way of their classic slogan Mark, “Have a break, have a Kit-Kat”. 

Hence, Nestlé’s shape mark was only registrable for cakes and pastries.

Was the mark distinctive?

The Hearing Officer found the mark prima facie to be devoid of distinctiveness on the basis it was a shape commonly found for chocolate bars and biscuits.  The Hearing Officer then gave consideration as to whether the mark had subsequently acquired distinctiveness by virtue of its use thereof.  To this end, Nestlé adduced evidence from two surveys. 

The Hearing Officer found that although the consumers would associate the shape of the mark as being a KIT KAT (and therefore, with Nestlé), Nestlé had not demonstrated that the consumer relies on the shape of the product in order to distinguish the trade source of the goods at issue.  Therefore, the claim of acquired distinctiveness failed.

 What’s next?

 Although Nestlé’s UK application has failed, they do have a Community Trade Mark (CTM) registration for “sweets; bakery products, pastries, biscuits; cakes, waffles” (although the application was refused for “chocolate, chocolate products, confectionery, candy”).

Although Cadbury previously attempted to invalidate Nestlé’s CTM registration on the same basis as they opposed their UK application, their application was rejected.  Under the principles of estoppel, Cadbury cannot now file a second attempt to invalidate Nestlé’s CTM registration on the same grounds as they previously used.

Therefore, it seems that it is one all to the parties but if you had to name a “winner” at this stage, I would go with Cadbury.  Although Nestlé have their CTM registration, I suspect they will appeal the UK  Intellectual Property Office’s decision because as it stands, Cadbury appears to be in a stronger position to be able to produce a four fingered chocolate bar, than Nestlé is to prevent such a product entering the market.