Tough break? KitKat and the fight over those four fingers

The distinctive four-fingered KitKat is a widely recognized chocolate bar.

Nestlé, who makes KitKats, has successfully secured trademark protection for the shape of the bar in Canada, Australia, Germany, France, and South Africa.

However, the Court of Justice of the European Union (CJEU) has dismissed an appeal brought by Nestlé against rival Cadbury to have the shape of KitKats trademarked across Europe.

Background

KitKats landed in Europe in 1935, shortly before a similar-looking Norwegian chocolate bar – the Kvikk Lunsj – also hit the market. Kvikk Lunsjs are manufactured by Mondelez, which owns a number of confectionery brands, including Cadbury.

For decades, KitKats and Kvikk Lunsjs happily co-existed, and there was no issue with the fact that they were both four-fingered chocolate wafer bars.

However, in March 2002 Nestlé filed an application to register an EU trademark for the KitKat shape with the European Union Intellectual Property Office (EUIPO). It was successfully registered in 2006, but was contested by Cadbury the following year, who took issue with the fact that it was similar to their Kvikk Lunsj.

In 2011, EUIPO declared that the mark was invalid. Nestlé appealed this decision, and the case made its way to the CJEU, the top court in Europe.

Just how distinctive is a four-fingered KitKat?

The case was really attempting to determine whether KitKat’s four-fingered wafer shape was distinctive and identifiable enough to warrant trademark protection.

The CJEU confirmed that, according to EU law, a trademark is acceptable for registration if it has “distinctive character, inherent or acquired through use, throughout the European Union”.

The Court found that, although it was clear that the four-fingered KitKats had a distinctive character in a significant part of the EU, that was not true for all member states. Evidence of Kitkat’s distinctiveness had not been ascertained for Belgium, Ireland, Greece and Portugal.

Therefore, Nestlé could not claim that it owned the trademark to KitKat’s four-fingered shape.

Take-aways

Commentators believe that, dispute a ruling by the EU’s top court, this may not be the end of the dispute. Nestlé could reapply again to the European Union Intellectual Property Office, but this time armed with conclusive proof that the four-fingered shape of KitKats were distinctive in every part of the EU. In the meantime, the trademark still exists in some parts of Europe, such as France, Germany, Spain and Italy – but not across the EU as a whole.

The world of confectionary is no stranger to trademark disputes. In a similar case from 2012, the Court of Justice of the European Union ruled that Lindt’s Easter bunnies wrapped in gold foil and with a red ribbon were also not distinctive enough for trademark protection.

If a company seeks trademark protection, they need to be able to demonstrate that their product’s shape is distinctive. Here in Canada, the Trade-marks Act defines “distinctive” as “a trade-mark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or is adapted so to distinguish them”. That is, they need to be so distinctive that a member of the public will clearly identify a company’s particular product solely by its shape and appearance – known as trade dress or distinguishing guise in Canada

Stay tuned to hear if KitKat renews the trademark battle in the EU.

For more about distinctiveness, see our previous blog post here, or contact our Intellectual Property Group.