Intellectual Property

KitKat loses latest battle in the chocolate trademark wars

By Staff

Nestlé’s failure to trademark the shape of a KitKat bar in the European Union (EU) is the latest in a mixed bag of decisions for the confectionary giant, Toronto intellectual property lawyer Taras Kulish tells

The Guardian newspaper reports that the European Court of Justice (ECJ) recently upheld an earlier decision that found KitKat’s “four trapezoidal bars aligned on a rectangular base” was not known well enough in EU member states to grant it trademark protection.

“This is a major blow to Nestlé, but it shouldn’t come as a major surprise since they have a long history of trying to register the four-finger shape of the chocolate bar with mixed success,” says Kulish, a senior associate with Steinberg Title Hope & Israel LLP.

As Kulish pointed out in a recent post on the chocolate trademark wars, Nestlé previously succeeded in trademarking the shape in South Africa but lost in Singapore.

Even though the famous chocolate bar recently celebrated its 80th birthday, its owner only got around to trying to protect the design in Europe in 2010.

Nestlé claimed KitKat's shape and “snap” function had become distinctive, reasoning that if Toblerone could successfully trademark its “zigzag prism” shape, it should be able to monopolize the four-fingered rectangular bar, Kulish explains.

“The lesson learned here is register early — when you first come out with the product — and register often,” says Kulish, who comments generally and is not involved in the matter.

While 3D trademarks are challenging to register, Kulish points to a limited number of successful examples, including the French company Sarment du Medoc, which managed to trademark the shape of its chocolate twigs.

For Nestlé, the KitKat battle marks the end of a 16-year process in European courts. According to the Guardian, the chief opponent to its application was another multinational conglomerate, which owns rival chocolate manufacturer Cadbury. Despite its victory, the newspaper reports many of its arguments were also rejected by the ECJ.

Initially, the company actually succeeded after applying in 2002 to the EU’s intellectual property office for protection of KitKat’s shape, but the status was challenged by the rival in 2007.

Nestlé’s case was dealt a blow earlier this year by a previous finding that KitKat fell short of the threshold required for trademark protection in a number of EU states, including Ireland, Germany, Spain and France. A similar application in U.K. court also ended with a finding that its shape had “no inherent distinctiveness.”

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