Nestle vs Cadbury, Kit-kat (ing)

After Nestle blocked Cadbury’s bid to trademark the color purple used for its chocolate wrappers, on October 7 2013, they are at it again, involved in yet another legal dispute over the shape of Nestle’s Kit Kat chocolate bar.

On July 8^th 2010 Nestle applied to register the 3D Trademark for the shape of the Kit Kat bar. Cadbury UK Limited opposed the application saying

• The trade mark is devoid of any distinctive character, consists exclusively of a sign that may serve, in trade, to designate the  characteristics of the goods for which registration is sought and is a shape which is customary in the established and bona fide practices of the trade.
• The mark had not acquired a distinctive character through use prior to the relevant date and registration would therefore be contrary to subsections (b),(c) and (d) of s.3(1) of the Act.
• The mark consists exclusively of the shape which results from the nature of the goods themselves. Registration would therefore be contrary to s.3(2)(a) of the Act.
• The mark consists exclusively of the shape of the goods which is necessary to obtain a technical result. The shape of the goods assists in the manufacture of the product and facilitates the division and consumption of the goods. Registration would therefore be contrary to s.3(2)(b) of the Act.

Nestle Denied the opposition saying

• Denied the s.3(1)(b) ground on the basis that the shape applied for departs significantly from the norm or customs of the sector and thereby fulfils its essential function as an indication of trade origin.
• Denied the s.3(1)(c) ground, pointing out that the goods in question are sold by reference to a variety of shapes, and disputed that the opponent had identified the characteristics of the goods which the shape is claimed to represent.
•  Denied the s.3(1)(d) ground and put the opponent to proof that the shape had become customary in the bona fide and established practices of the trade.
• Denied the s.3(2)(a) ground pointing out that the goods in question come in a variety of shapes and that the mark contains features which are not a result of the nature of the goods.
• Denied the s.3(2)(b) ground on the basis that not all the essential characteristics of the shape perform a technical function and that the shape incorporates major non-functional, arbitrary and/or capricious elements which play an important role in the shape.

The judge Richard Arnold has handed down his decision as the application is refused, except in relation to cakes and pastries.

He has also referred the case to the European Union Court of Justice in Luxembourg for guidance on EU law and looking forward for confirmatory answers for

• Inherent distinctive characters
• Acquired Distinctiveness
• Nature of Goods/Technical Results

This Case may have practical implication in future with relation to the Registration of the Shape of the product as a Trademark.

By Akshatha Karthik

Photo by Ramesh NG/ Flickr.com/CC BY-SA 2.0