Cadbury has blocked Nestlé from registering the distinctive shape of the four-finger Kit Kat as a UK trademark.
The hearing officer of the Intellectual Property Office ruled in favour of Cadbury because he felt the shape of the four-finger Kit Kat was designed to achieve a technical result. In other words, the number of fingers and groves between them were designed to help people to determine portion size and easily eat the chocolate bar, rather than identify it.
The officer also ruled that the large sales of Kit Kat did not prove that the public differentiated the bar by shape, but rather that they differentiated the product by the presence of the words ‘Kit Kat’ on the bar.
The result creates the unusual situation in which Nestlé owns a Community Trade Mark registration for the four-finger shape at a European Union level, but not at a UK level.
At the start of the year, Cadbury failed in a bid to block the EU-level trademark. At the time, the board of appeal of the Community Trade Mark ruled that there was sufficient evidence to demonstrate that it was at least likely that the public exclusively associated the shape with Kit Kat.
The likelihood is the Nestlé will appeal against the decision.
“It seems likely that Nestlé will appeal this decision, particularly in light of its successful defence of an invalidity action filed by Cadbury against a Community Trade Mark Registration for the shape of the Kit Kat bar,” said Lee Curtis, partner at trade mark attorney firm Harrison Goddard Foote.
But he said the reasoning given in the latest case would be concerning for Nestlé.
“The hearing officer of the UK application suggested that he came to a different decision to the Community Trade Marks Office as he had the benefit of ‘better’ evidence from experts and was able to rely on the cross examination of witnesses leading him to a finding that the shape of the Kit Kat bar was dictated by functionality not aesthetic appeal.
“He also made the comment that although the shape of the bar may have become associated with Nestle to a degree in the minds of the public by way of the high volume of sales of the product, it did not act as a trade mark as it was wrapped and was only viewed post sale,” said Curtis.
The tussle over the Kit Kat follows another case last year involving the two companies. On that occasion, Cadbury won the right to trademark the purple colour of its Dairy Milk packaging.
Both companies are eager to trademark characteristics of their own products and block the other from doing so – at stake is the kind of chocolate bars they will be able to market in the future.