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No lucky break for the Kit Kat


The European Court of Justice handed down judgment this morning the battle between Nestle and Cadbury over whether the shape of the Kit Kat could be registered as a trade mark. If granted the registration could be used by Nestle to prevent third parties from selling chocolate bars with a similar shape.

The Kit Kat is one of the most popular chocolate bars in the UK and its basic shape has remained almost unchanged since 1935. Nestle filed a trade mark application in 2010 for a three dimensional trade mark for the shape of the four finger bar:

This differed from the actual product in that it omits the embossed words Kit Kat which appear on the chocolate. Cadbury opposed the application for registration and on appeal Mr Justice Arnold referred a series of questions to the ECJ concerning the circumstances in which trade marks may acquire distinctiveness and in relation to the various exclusions for shape trade marks in the trade marks directive.

In particular, the Court was asked a fundamental question about whether it is sufficient in assessing acquired distinctiveness for a significant proportion of the relevant consumers to recognise the shape and merely associate it with the Kit Kat product or whether those consumers have to rely on the shape (as opposed to any other trade marks such as the name Kit Kat) as indicating the origin of the goods.

Advocate General Wathelet issued his Opinion in June and recommended that something more than mere recognition was required to prove that the trade mark could be registrable. Following his opinion Nestle attempted to reopen oral proceedings before the ECJ but that application was refused.

The Court has now held that an applicant must prove that the relevant class of persons must perceive the goods as originating from a particular company exclusively by the mark applied for as opposed to any other mark (such as the word Kit Kat) which might also be present. The court also provided rulings on how the exclusions contained in the trade mark directive might apply in combination and on the scope of the exclusion for shapes which are “necessary to obtain a technical result&rrdquo;.

The Advocate General’s opinion was widely interpreted as suggesting that Nestle’s trade mark will not be registered. The case will now return to Arnold J to rule in the light of the ECJ’s findings.

The Judgment is here

Press coverage (AG Opinion)

Nicholas Saunders appeared for the United Kingdom instructed by the Cabinet Office