Nestlé has been producing the four finger KitKat bars in the UK, since 1953. In 2010, the food giant applied to trademark the ‘fourfinger’ shape of the KitKat bars. The application was successful initially, based on a survey conducted by Nestlé, where it presented an image of the four-finger shape to the public and asked them to give their responses to what they saw. Over 90% of the people involved in the survey stated that image correspond to the chocolate bar “KitKat”.
Apprehending the success of Nestlé’s, based on the evidence from the survey, Cadbury opposed this motion at European court. Cadbury and Nestlé already have a torrid past of intellectual property disputes, when Cadbury lost the case of trademarking the shade of purple used on Cadbury Dairymilk. Adamant not to let Nestlé win this motion, in fear of monopolizing the four-fingered chocolate products, Cadbury took this stance.
Initially, Nestlé appealed to the UK High Court and then further appealed to the European Court of Justice in relation to Cadbury’s objection. The European Court of Justice in 2013 rejected Nestlé’s appeal to protect its four-finger shape as a trademark. The application was rejected on the grounds that the survey did not sufficiently satisfy the definition of a “trademark” as provided in section 1 (1) of the Trade Mark Act (TMA) as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”.
This decision highlights the fact that businesses wanting to register shapes as trademarks may struggle to establish the fact that consumers directly associate with the shape of a product without any logo or writing. Despite 90% of the survey group recognizing the four-fingered candy bar as Kitkat, 10% still did not, which leaves a room for reasonable doubts. In the legal argument, it was stated that, 90% of the people who recognized the four-fingered chocolate bar as Kitkat did so because of the distinct red-white packaging and the unique writing style on the chocolate bar.
According to Sharon Daboul, a trademark attorney, the confectionary-producing multinationals are always interested to protect their product designs however only a few succeed. Nestlé, the world’s biggest food group that sold KitKats worth 40 Million GBP a year in the UK between 2008 and 2010, suffered a defeat to trademark their four finger KitKat shape. Consecutively, Cadbury owned by US group Mondelez, also failed to trademark the purple color for its chocolate bar wrappers in 2014 by the UK Supreme Court. In contrast, Toblerone successfully protected its “zigzag prism” shape design after winning the case at the European Court of Justice in 2002.
The empirical evidence show that shapes and appearances can be trademarked as long as it complies with section 1(1) of Trade Mark Act to the dot. Toblerone was able to successfully trademark its novel shape because no one else was producing triangular chocolate bars. Kitkat essentially failed to trademark it because there is already a similar Norwegian product named Kvikk Lunsj (quick lunch in English). This product has been around since 1937and is available in some UK shops now.