Britain’s High Court: No Break for Nestle

Nestle Cannot Trademark the Shape of the Kit Kat Bar

Britain’s High Court did not give Nestle a break. The court ruled that Nestle cannot trademark the “shape of a four finger chocolate coated wafer” that is reflected in the company’s Kit Kat bar. Nestle filed for a United Kingdom trademark protecting the shape in 2010. In a battle between Nestle and Cadbury that has been raging since then, the court determined last week that Nestle’s trademark cannot be registered.

Nestle’s attempt to trademark the shape of the Kit Kat bar has faced issues surrounding the acquired distinctiveness of the shape. The shape of the Kit Kat bar does not inherently distinguish it from another product. In order to obtain trademark rights to the shape, Nestle must show that the shape has acquired distinctive character.

The High Court found that to demonstrate that a trademark has acquired distinctiveness, the applicant must prove that a significant portion of the relevant consumers perceives the relevant goods as originating from a particular entity because of that trademark on its own, and not because of any other trademark which may also be present. Here, the shape of the Kit Kat bar, while it may be generally well-known and recognizable, is not used by consumers to identify the product in the store before they purchase it. Instead, consumers rely on the Kit Kat name and logo when making purchases. The shape of the candy bar is only visible to consumers after they take the treat home and open the wrapper. Additionally, Nestle did not provide evidence to the High Court that the shape of the chocolate bar has been featured in Nestle’s advertising for a long period of time or that the shape was featured on product packaging. Thus, the evidence Nestle presented to demonstrate acquired distinctiveness was not enough to prove distinctiveness in the shape itself.

Nestle intends to appeal this decision. The company will likely present new consumer surveys specifically tailored to address the evidentiary issues that the High Court highlighted in its determination. However, Nestle may still face hurdles as it is unclear whether other products on the market have featured the same shape and whether consumers have thought that such products are Kit Kat products, which will likely factor into the acquired distinctiveness determination.

U.S. trademark law has similar acquired distinctiveness requirements for product design. Hershey, the company that makes Kit Kat for the U.S. market, has secured federal registration of trademarks in the shapes of both the Hershey’s chocolate bar squares and Hershey’s Kisses. While Kit Kat’s advertising in the U.S. may emphasize the breakable pieces of the candy bar, the same may not be true for the brand’s U.K. advertising.

This is not the first time rivals Nestle and Cadbury have come to blows over trademark issues. Previously, the parties were embroiled in litigation that ultimately blocked Cadbury from trademarking its signature shade of purple. Cadbury now intends to break off a piece of the market by producing a candy bar similar to the Kit Kat. — Rina Van Orden