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Nestlé left with four-fingered problem in quest for KitKat trademark Nestlé left with four-fingered problem in quest for Kit Kat trademark
(34 minutes later)
Have a break, and think about the following question. Which confectionary bar consists of four long wafer fingers covered in chocolate, which snap apart when pressed together? Have a break, and think about the following question. Which confectionery bar consists of four long wafer fingers covered in chocolate, which snap apart when pressed together?
The answer, potentially, is any number of generic chocolate bars made by any manufacturer who wishes to do so.The answer, potentially, is any number of generic chocolate bars made by any manufacturer who wishes to do so.
That prospect, at least, came a little closer on Thursday, after the advocate general of the European court of justice said that an attempt by Nestlé, the manufacturer of KitKats, to trademark the bar’s distinctive four-fingered shape did not comply with EU law. That prospect, at least, came a little closer on Thursday, after the advocate general of the European court of justice said that an attempt by Nestlé, the manufacturer of Kit Kats, to trademark the bar’s distinctive four-fingered shape did not comply with EU law.
Though the decision is not yet binding, the advocate general’s opinion is almost always followed by the EU court – a ruling which could potentially open the way for a range of copycat KitKats in British sweet shops and supermarket aisles. Though the decision is not yet binding, the advocate general’s opinion is almost always followed by the EU court – a ruling which could potentially open the way for a range of copycat Kit Kats in British sweetshops and supermarket aisles.
The senior lawyer’s opinion is merely the latest skirmish in a long-running battle between Nestlé, the biggest food company in the world, and Cadbury, now owned by the US group Mondelez, over trademarking their products in the UK – itself part of a much wider battle by manufacturers to protect their products in the multi-billion pound confectionary industry. The senior lawyer’s opinion is merely the latest skirmish in a long-running battle between Nestlé, the biggest food company in the world, and Cadbury, now owned by the US group Mondelēz, over trademarking their products in the UK – itself part of a much wider battle by manufacturers to protect their products in the multibillion-pound confectionery industry.
Nestlé first attempted to protect the KitKat four-finger design in 2010, arguing that in the 80 years since the chocolate bar was introduced by Rowntree in 1935, its shape and “snap” function had become distinctively associated with KitKats. Nestlé first attempted to protect the Kit Kat four-finger design in 2010, arguing that in the 80 years since the chocolate bar was introduced by Rowntree in 1935, its shape and “snap” function had become distinctively associated with Kit Kats.
Shown a picture of the bar without its wrapper or any branding, the company argued in court, 90% of people identified it as the snack that for decades has been advertised in the UK with the slogan “Have a break, have a KitKat”. Shown a picture of the bar without its wrapper or any branding, the company argued in court, 90% of people identified it as the snack that for decades has been advertised in the UK with the slogan “Have a break, have a Kit Kat”.
But after Cadbury attempted to block the move, the High Court rejected the Swiss giant’s bid in 2013, forcing it to appeal, finally, to Europe. But after Cadbury attempted to block the move, the high court rejected the Swiss giant’s bid in 2013, forcing it to appeal, finally, to Europe.
The current dispute follows an earlier and even longer-running court battle between the two confectionary giants, after Cadbury attempted in 2004 to trademark the particular shade of purple it used for its Dairy Milk bars. The current dispute follows an earlier and even longer-running court battle between the two confectionery giants, after Cadbury attempted in 2004 to trademark the particular shade of purple it used for its Dairy Milk bars.
Arguing that it had been associated with the colour purple since Milk Tray was introduced in 1915, Cadbury registered the shade Pantone 2685C in 2004, a move that was initially successful, despite Nestlé’s objections. The decision was upheld by successive authorities before Nestlé eventually had it overturned in the court of appeal in 2013. (Nestlé, as it happens, has also attempted to trademark a slightly different shade of purple which it uses for its Quality Street “My Purple Bar” snack. Mondelez, meanwhile, has successfully registered the lilac shade it uses for its Milka products). Arguing that it had been associated with the colour purple since Milk Tray was introduced in 1915, Cadbury registered the shade Pantone 2685C in 2004, a move that was initially successful despite Nestlé’s objections.
In theory, the shapes of chocolate bars (and other products) should not be more difficult to trademark than their logos or names, says Sharon Daboul, a trademark attorney with EIP – Toblerone, she notes, has successfully trademarked its “zigzag prism” shape. The decision was upheld by successive authorities before Nestlé eventually had it overturned in the court of appeal in 2013. (Nestlé, as it happens, has also attempted to trademark a slightly different shade of purple which it uses for its Quality Street “My Purple Bar” snack. Mondelēz, meanwhile, has successfully registered the lilac shade it uses for its Milka products).
“But in practice [shapes] are [more difficult], because it’s difficult for applicants to show that consumers look at the shape of the product alone as an indicator of trade origin.” In theory, the shapes of chocolate bars and other products should not be more difficult to trademark than their logos or names, says Sharon Daboul, a trademark attorney with EIP. Toblerone, she notes, has successfully trademarked its “zigzag prism” shape.
But in practice shapes are more difficult, “because it’s difficult for applicants to show that consumers look at the shape of the product alone as an indicator of trade origin.”
Consumers normally pay more attention to the label than the shape, she says, and “where that is the case – ie the shape is not distinctive for the product – it’s not capable of registration as a trademark. Many applications to register the shapes of washing tablets and bottles or containers have been refused on this basis.”Consumers normally pay more attention to the label than the shape, she says, and “where that is the case – ie the shape is not distinctive for the product – it’s not capable of registration as a trademark. Many applications to register the shapes of washing tablets and bottles or containers have been refused on this basis.”
An attempt by Nestlé to trademark the shape of the polo mint – but without specifying its size or colour – was rejected by the Court of Appeal in 2004. (“This is an appeal with a hole in the middle,” commented Lord Justice Mummery tartly.) An attempt by Nestlé to trademark the shape of the Polo mint – but without specifying its size or colour – was rejected by the court of appeal in 2004. (“This is an appeal with a hole in the middle,” commented Lord Justice Mummery tartly.)
Brands, Daboul says, are increasingly using non-traditional trademarks, such as shapes, colours and sounds, to identify their products, leading to an increased interest in legally protecting them.Brands, Daboul says, are increasingly using non-traditional trademarks, such as shapes, colours and sounds, to identify their products, leading to an increased interest in legally protecting them.
“Having a trademark registration gives the owner a monopoly right that could last forever if it is looked after, and that is why courts are careful to award these rights. If a manufacturer like Cadbury is able to bar other manufacturers from ever using the colour purple for chocolate, for instance … it presents them with a significant advantage.”|“Having a trademark registration gives the owner a monopoly right that could last forever if it is looked after, and that is why courts are careful to award these rights. If a manufacturer like Cadbury is able to bar other manufacturers from ever using the colour purple for chocolate, for instance … it presents them with a significant advantage.”|
Nestlé many have deep pockets, but why go to so much trouble to copyright the KitKat shape, when its name and logo are already protected? “I can only assume that there is a genuine concern that there would be imitators,” says Vince Bamford of The Grocer. Nestlé may have deep pockets, but why go to so much trouble to copyright the Kit Kat shape, when its name and logo are already protected? “I can only assume that there is a genuine concern that there would be imitators,” says Vince Bamford of The Grocer.
“People have compared this to the Lego case [when the ECJ ruled in 2010 that the Danish toy manufacturer could not claim copyright on the shape and dimensions of its bricks], and when you see what has happened to the toy market since Lego lost the protection of its bricks, there are now dozens of Lego imitators out there.”“People have compared this to the Lego case [when the ECJ ruled in 2010 that the Danish toy manufacturer could not claim copyright on the shape and dimensions of its bricks], and when you see what has happened to the toy market since Lego lost the protection of its bricks, there are now dozens of Lego imitators out there.”
Rather than a direct copycat challenge from Cadbury or another major confectionery manufacturer, he says, Nestlé may be more conscious of the threat from discount supermarkets and others producing own brand bars with uncanny similarities to its 80-year-old product. Rather than a direct copycat challenge from Cadbury or another major confectionery manufacturer, he says, Nestlé may be more conscious of the threat from discount supermarkets and others producing own-brand bars with uncanny similarities to its 80-year-old product.
And while KitKat remains an enormously popular brand – it is the fifth most popular chocolate brand in the UK, with value sales totalling £180m a year in this country alone – 2014 figures saw those sales down 8% year on year. And while Kit Kat remains an enormously popular brand – it is the fifth most popular chocolate brand in the UK, with value sales totalling £180m a year in this country alone – 2014 figures saw those sales down 8% year on year.
“Arguably, this has at least given KitKat a bit of publicity, and that may be welcome,” says Bamford. “Arguably, this has at least given Kit Kat a bit of publicity, and that may be welcome,” says Bamford.