Unknown to most, a legal argument about a chocolate bar has been raging now for years and despite a High Court decision last week the battle is set to continue.
The case involves trade marks, specifically a three-dimensional mark in the shape of the four-fingered version of the KitKat. In the UK it is possible to apply to register the shape of 3D objects as trade marks but only if they satisfy a number of criteria. Nestlé believed the KitKat ticked all the right boxes but, unfortunately for it, its arch-rival Cadbury disagreed. It opposed Nestlé’s application to the Intellectual Property Office (‘IPO’) in 2010. The opposition was successful and the application failed.
There were a number of reasons for the failure but chief among them were that the bar did not have the necessary ‘distinctive character’ required – its shape was held to be within the ‘norms and customs’ of the sector – and that it had not acquired that distinctive character in relation to the goods covered by the application (except in relation to cakes and pastries).
Neither side was happy with this result – Nestlé appealed the decision of the IPO officer that the KitKat didn’t have distinctive character and Cadbury appealed the decision that it acquired it in relation to cakes and pastries. To make things more complicated, the High Court referred a number of issues relating to the interpretation of EU law (where our trade mark law come from) to the European Court in Brussels.
The European Court gave its decision in September last year and, last week, the High Court was finally in a position to decide the case (for the moment).
The case had boiled down to whether or not Nestlé could show that the four-fingered KitKat had acquired the necessary distinctive character. What this meant in practice was that it had to show that a significant proportion of people choosing to buy a KitKat perceived it as coming from Nestlé because of its shape (as opposed to any other trade mark which might also be present). Nestlé couldn’t and its appeal failed. Cadbury won its appeal and so the net result is that Nestlé cannot register the mark it wanted.
Nestlé has said it intends to appeal.