No Break For Nestlé In Attempt To Monopolise The Four Finger Kit Kat Bar Shape As A Trade Mark In The UK

Author:Mr Leighton Cassidy, James Martin and Katherine Wesolowski
Profession:Field Fisher Waterhouse
 
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Nestlé filed an application with the UK-IPO to register the three dimensional trade mark shown below for Chocolate; chocolate confectionery; chocolate products; confectionery; chocolate-based preparations; bakery goods; pastries; biscuits; biscuits having a chocolate coating; chocolate coated wafer biscuits; cakes; cookies; wafers in Class 30.

The application was accepted and published by the UK- IPO on the basis that Nestlé had shown the mark to have acquired a distinctive character as a result of use. Nestlé had already obtained a CTM registration for the same shape and was able to successfully defend a cancellation action filed by Cadbury UK Limited ("Cadbury") last year when the OHIM Board of Appeal held that the shape did not perform a technical function.

The UK application was opposed by Cadbury on the basis that the mark lacked distinctive character being a shape that was customary in the established practices of the chocolate bar and biscuit trade and being one which is exclusively necessary to obtain a technical result, namely the division of the chocolate into fingers.

After considering the technical functionality objection at length, the hearing officer concluded that the shape was attributable only to a technical result and minor arbitrary features had no real impact and did not overcome that fact. Consequently the mark was prohibited from registration under s3(2)(b) of the UK's Trade Marks Act 1994 ("Act") which bars registration of shapes necessary to obtain a technical result. The slab shape was found to result from the nature of moulded chocolate bars or moulded chocolate biscuits sold in bar form and the presence of the grooves was a feature necessary to achieve the technical result of breaking the bar into "fingers".

The UK-IPO went on to consider whether the shape was distinctive or had acquired distinctiveness through use overcoming the prohibition under s3(1)(b) of the Act which prohibits registration of trade marks devoid of distinctive character. Reviewing the purpose of a trade mark, namely "to permit consumers to make informed choices between the competing goods of differing undertakings in the course of trade" it was found that Nestlé had failed to show that consumers rely on the shape of the chocolate bar to identify the origin of...

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