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Nestlé KitKat trademark appeal against Petra Foods fails

By Oliver Nieburg+

28-Nov-2016
Last updated on 30-Nov-2016 at 08:58 GMT2016-11-30T08:58:32Z

KitKat shape trademarks in Singapore declared invalid by appeal court. ©iStock/robtek
KitKat shape trademarks in Singapore declared invalid by appeal court. ©iStock/robtek

The Court of Appeal in Singapore has reaffirmed Nestlé’s KitKat shape trademark is invalid and ruled Petra Foods’ Delfi Take-It bar cannot therefore infringe the mark.

Nestlé launched legal action against Petra Foods in 2013 alleging Petra’s Take-It bar infringed its Singapore shape trademarks for KitKat ‘2 Wafer Finger’ and ‘4 Wafer Finger’.

The case was rejected by Singapore's High Court in November 2014 and Nestlé’s trademarks were declared invalid.

Nestlé appealed that decision, but Singapore Court of Appeal ruled last Thursday (November 24) that its KitKat shape marks “are devoid of distinctiveness and have not acquired distinctiveness”.

Nestlé’s appeal was dismissed, its trademarks were confirmed as invalid and it was ordered to pay Petra Foods’ costs.

Delfi CEO John Chuang, said: “This has been a long and drawn out process but we feel vindicated and extremely pleased that the Court of Appeal has ruled in our favour and upheld the decision of the High Court. With this confirmation, we continue to provide all our consumers with great tasting chocolate products.”

A Nestlé spokesperson said: "We are naturally disappointed with the outcome, but we continue to protect and defend our intellectual property around the world."

UK case

Earlier this year, a UK high court ruled Nestlé’s KitKat lacked the distinctiveness to be registered as a 3D shape trademark in the UK.

It followed a 16-year battle with Cadbury maker Mondelēz International and a Court of Justice of the European Union (CJEU) referral.

Nestlé has said it will appeal the UK high court ruling.

South Africa case

However, it has been successful in a similar case in South Africa.

In January 2015, South Africa’s Supreme Court blocked International Foodstuffs’ (IFFCO) Tiffany Break bar from sale in the country because it contravened Nestlé’s South Africa trademarks on the 2-finger and 4-finger wafer shape.

IFFCO has appealed the ruling to the Constitutional Court, the country’s top adjudicator.

Case: Societe Des Produits Nestlé SA and another v Petra Foods Limited and another [2016] SGCA 64

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