By Simon Webster ‑ August 15, 2018
Who would have thought that a four-part chocolate bar could lead to a ten-year trademark battle? Yet somehow the KitKat trademark struggle rumbles on.
In 2002 Nestlé, makers of KitKat, applied for a trademark on the brand. At the same time the company tried to trademark KitKat’s shape, describing it as a "four trapezoidal bars aligned on a rectangular base". This is where the litigation started.
In 2006 the European Union (EU) granted Nestlé a trademark on the shape of the chocolate bar. However, several other chocolate treat manufacturers took issue with this decision.
The latest instalment of the ensuing legal battle took place last month when Europe’s highest court ruled that KitKat’s shape did not warrant trademark status. It is important to note that the KitKat brand logo is not in question here. The issue is around the four-finger shape of the snack.
It is not uncommon for the shape of a product to be granted a trademark. Other chocolate delicacies, such as Toblerone and Hershey’s Kisses are protected. Pringle’s crisps were even granted a patent in 1976. So why, in KitKat’s case, was the protection rejected?
Seemingly, in this case, the decision was based on KitKat not being distinctive in every single country in the EU. The implication was that, for the shape of KitKat to be trademarked across the EU, there needed to be evidence that the shape was distinctive in every country – not just most of the Union. Nestlé had not provided enough evidence of the distinctiveness in Belgium, Ireland, Greece and Portugal.
Nestlé argued this set the bar too high, not only for themselves but for almost any company. Meanwhile, Nestlé competitor Mondelez (which makes a similar shaped chocolate bar in Norway) argued that the shape was not distinctive enough for protection in any country. Both arguments were rejected by the court.
The implications of this ruling could be significant. It means that any company applying for trademark status across the whole of the EU will need to show that their product is distinctive in every country in the Union. This does not preclude companies from applying for protection individually to each country, but the results, particularly with a product such as KitKat, could vary by country. KitKat is protected in France and Germany but not in the UK.
A major advantage of the EU trademarking system should be to provide a universal solution for the economic and political bloc and save companies having to apply for protection in individual countries. This new ruling suggests that, to be successful in the granting of an EU trademark, products would need to demonstrate evidence for every one of the (currently) 28 EU countries. This could set the bar extremely high for many companies, particularly those that do not trade across the Union.
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