Kit Kat Barred from Keeping its Four-Finger Bar Trade Mark

Are you #TeamNestlé or #TeamCadbury, as once again the two confectioners battled it out in the courts over trade marks? Previous battles have included, in 2013, where the Court of Appeal (England and Wales) held that Cadbury could not trade mark its colour purple and, in January 2016, where the High Court (England and Wales) invalidated Nestlé’s UK shape trade mark for its four-finger bar.

Background

In 2011, Cadbury was successful with its application to invalidate Nestlé’s EU trade mark for its Kit Kat four-finger bar shape (pictured above). On appeal, the Board of Appeal allowed the trade mark as, although the trade mark lacked distinctive character, it had acquired distinctiveness through use. Cadbury appealed to the EU General Court.

EU General Court

The General Court considered four main issues as to whether the trade mark had become distinctive through use (i.e. had it become distinctive for the goods – ‘sweets, bakery products, pastries, biscuits, cakes, waffles’ – that it was registered for):

1. Had the trade mark been used for all the goods it was registered for?

The four-finger bar could be a sweet or a biscuit but evidence had not been provided for it being used for ‘bakery products, pastries, cakes and waffles’.

2. Was the trade mark being used in the form pictured above?

Cadbury argued that the four-finger bar had a dominant ‘KIT KAT’ logo on it and it was this logo that acquired distinctiveness. The Court held that use with another trade mark did not prevent the four-finger bar itself being able to indicate its commercial origin (i.e. that it was from Kit Kat or Nestlé) and a significant percentage of those surveyed and shown just the four-finger bar shape had ‘spontaneously and immediately’ associated it with Kit Kat or Nestlé.

3. Was the evidence insufficient, as Cadbury argued it did not prove acquired distinctiveness and the surveys were designed in a way leading to misleading results?

The Court held that the evidence was relevant and companies that specialised in market research had undertaken the surveys and their independence and professionalism had not been questioned and it had not been explained how the questions could be biased.

4. Had the mark acquired distinctive character throughout the EU?

The Board of Appeal had been wrong to find that it was sufficient that the countries that survey evidence had been provided for made up almost 90% of the EU population and almost 50% of those surveyed in these countries recognised the mark as being from Kit Kat/Nestlé. Instead the test should be whether, throughout the EU (not just a substantial proportion of all the EU members put together), a significant proportion of the relevant public perceived the mark as indicating the commercial origin of the goods (i.e. it being from Kit Kat/Nestlé). Therefore, despite it being shown that the trade mark acquired distinctiveness through use in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the UK, the Board of Appeal needed to analyse recognition in Belgium, Ireland, Greece and Portugal, as a lack of recognition in one part of the EU could not be overcome by higher awareness in other parts of the EU.

The trade mark had not acquired distinctive character through use and the earlier decision that the trade mark was invalid was upheld. This decision shows just how difficult it can be to register a shape as a trade mark.

Briffa advises on contentious and non-contentious trade mark matters and assists its clients with trade mark applications, opposition proceedings, cancellation proceedings and infringement disputes in various jurisdictions around the world through its network of international agents. If you have any queries or concerns regarding your trade mark portfolio or brand management generally, or if you would just like some general advice, please do not hesitate to contact us.

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