A European Court has refused to let Nestlé trademark the ‘four finger Kit Kat bar.’ Turner Little looks at why this decision was made, and what this means for firms looking to register UK trademarks.
The case
Nestlé has been producing their iconic four finger Kit Kat bar in the UK since 1935. It was only in 2010 that the firm decided register the confection’s shape as a trademark. Cadbury raised an objection to the application, however, because they feared it would provide Nestle with a monopoly on four-fingered chocolate products.
The application was initially successful, however Cadbury initiated a legal challenge. The case was first escalated to the High Court and then the EU Court of Justice (CJEU). During this process judges subjected the shape of the confection to increased scrutiny and their assessments caused them to refuse Nestlé’s application to trademark the four finger Kit Kat bar.
Support for Nestle
To understand the CJEU’s decision, we need to look at the evidence which caused the UK’s Intellectual Property Office (IPO) to approve Nestlé’s application. UK law allows companies to register trademarks for shapes, 3D objects and other non-conventional features e.g. the triangular shape of a Toblerone. Also Nestlé used the results their own poll as the main evidence to support their application.
This survey concluded that when showed an image of a four finger shape, 90% of the UK public associated it with ‘Kit Kat’ or used the word ‘Kit Kat’ to describe it. We also need to understand the definition of a trademark under Section 1(1) of the Trade Mark Act 1994 (TMA). This defines a trademark as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.”
Failing to satisfy definition
Now we can see that the survey failed to satisfy TMA’s definition of a trademark; the first reason why CJEU refused the application. Nestlé’s poll did indicate that the four-fingered shape was associated with their products. However 10% of respondents didn’t agree, so the poll didn’t guarantee that the shape would identify the product as a Nestlé creation under the guidelines of the TMA.
Also the CJEU expressed concerns that without other visible trademarks e.g. Kit Kat logo, consumers wouldn’t be able to identify the four fingered bar as a Kit Kat product. How does a consumer identify a Kit Kat; through its logo, or its four fingered shape? This doubt was another reason the Court said the four finger Kit Kat bar didn’t fulfil the TMA’s definition of a trademark.
Prohibited from registration
The CJEU also ruled that Nestlé was prohibited from registering the trademark under the TMA. This is because the three widely recognised components of a Kit Kat are its rectangular slab shape, the grooves dividing its fingers and the number of grooves on a standard bar. Under Section 3(2) of the TMA, a trademark can’t consist of: “a shape which results from the nature of the goods themselves,” or “the shape of goods which is necessary to obtain a technical result.”
They assessed the three widely recognised features of a Kit Kat under the parameters of Section 3(2). The Court ruled that the rectangular slab shape resulted from the nature of the goods. They also said that the grooves existed to make it easier for consumers to eat the chocolate bar; equating this with the “obtaining a technical result” part of Section 3(2).
This parameter also reference’s how a product is manufactured. Since the number of grooves on a Kit Kat is determined by specific machinery and equipment, the CJEU ruled that it also counted as “obtaining a technical result.” The widely recognised features of a four finger Kit Kat all fell under the scope of Section 3(2) of the TMA, causing CJEU to refuse Nestlé’s application to trademark the shape.
Turner Little
This case indicates that firms need to consider a number of issues, especially in light of Section 3(2) of the TMA, before they submit applications to trademark shapes in the UK. You should enlist the help of a specialist such as Turner Little to handle the legal processes necessary to protect your company’s intellectual property.
Turner Little was founded in 1998 and it has since become a well-established UK based professional Company Registration Agents, Registered Bank Intermediaries and Business Consultants, as well as Trust providers.
