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Nestlé’s KitKat trademark fails in EU court, but may be registered under national regimes

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Douglas Yu

By Douglas Yu+

Last updated on 19-Dec-2016 at 20:38 GMT2016-12-19T20:38:24Z

Nestlé KitKat trademark appeal has failed in a UK high court in January this year.  Photo: iStock/robtek
Nestlé KitKat trademark appeal has failed in a UK high court in January this year. Photo: iStock/robtek

Nestlé has failed in proving to the General Court of the EU that its KitKat three-dimensional shape has the “distinctive character” to merit a trademark within the EU.

But one lawyer says the trademark may still succeed in national legislatures where the shape is reconized by consumers as a KitKat shape.

Yesterday, the General Court of the EU annulled European Union Intellectual Property Office (EUIPO)’s decision to register the KitKat shape as a trademark across several food categories, including sweets and baked goods.

The ruling came almost 10 years later after Cadbury Schweppes, now Mondelēz UK Holdings & Services, applied to EUIPO to prevent Nestlé from registering that trademark

This site also previously reported, in January this year, a UK high court issued a similar ruling, accepting Cadbury’s argument that there were many other similar shaped products on the market.

What does the EU General Court say?

The court said that “none of the evidence taken into consideration by EUIPO establishes use of the mark in respect of bakery products, pastries, cakes and waffles.”

“EUIPO erred in law in considering that the product in question (KitKat) could be included in any of the categories of goods concerned.”

The court also concluded that the distinctive character acquired through use of that trademark must be proven in all the EU member states concerned.

However, when Nestlé first filed the application for registration on March 21, 2002, the EU was composed of 15 member states as opposed to 28 now.

Mondelēz’s spokesperson from the UK branch, Samantha Wothers, told ConfectioneryNews, “We are naturally pleased by this ruling by the General Court of the European Union which is in line with our protection that the shape of the KitKat bar should not be protected as a trade mark across the European Union.”

IP lawyer: the case set high bar

Prior to the general court’s ruling, IP lawyer at Mishcon de Reya, Sally Britton, said non-traditional trade mark registrations covering shapes, sounds, colors and smells are becoming increasingly popular and brands look to drive brand value.

“This case (KitKat’s 3D trademark case) is interesting as it examines the type of use and consumer recognition required to obtain monopoly protection over a shape mark, and sets the bar very high,” she said.

Despite the previous warning from IP lawyer James Sweeting, that the legal test established by the CJEU (Court of Justice of the European Union) last year makes it “extremely difficult” for companies to obtain monopolies over shapes of their products, EUIPO said it is likely to appeal to CJEU again in the future.

KitKat may be registered under national trademark regime

Nick Walker, partner in the Brands and IP and Dispute Resolution teams at Lewis Silkin, said that the latest ruling shows that courts are often skeptical about the extent to which a shape alone is capable of identifying a specific brand, rather than the shape in combination with other marks, such as words and logos.

“It is entirely possible that we may now see an increase in ‘copycat KitKats’ but it’s not carte blanche for competitors,” he said.

However, “the KitKat, along with other shapes, may still be registerable under national, as opposed to the EU, trade mark regime where the shape is recognized by consumers as coming from a specific brand,” Walker added.

“Businesses that have shape marks should be following Nestlé’s strategy following this decision closely,” Britton said.

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