KitKat has faced a further setback in a long-standing legal dispute in the EU over the right to trade mark protection in Europe for the shape of its four-finger chocolate bar, following an Advocate General Opinion (AGO) passed down today (Thursday 19 April 2018).
Nestlé, the owner of KitKat, first sought trade mark protection for the shape of its chocolate bar at the European Intellectual Property Office (EUIPO) in 2002. This was challenged by rival chocolate company, Mondelez, which owns the Cadbury chocolate brand. Since then, the dispute has taken many twists and turns. Last year, the Court of Appeal in the UK rejected Nestle’s attempt to seek trade mark protection for the shape of is KitKat chocolate bar on the grounds that the shape trade mark has “no inherent distinctiveness”.
The AGO has advised the CJEU that Nestlé’s appeal should be dismissed; which means Nestle’s trade mark registration may ultimately be revoked. The next step will be to await the CJEU’s final decision on the matter.
Tania Clark, partner and trade mark attorney at intellectual property law firm, Withers & Rogers, and president of CITMA, said:
“This has been a very hotly-contested legal dispute and Nestlé will be very disappointed by this decision.
“Many brand owners will be surprised that the evidence compiled by Nestlé to show that many consumers were able to recognise the KitKat chocolate bar by its shape alone, was not considered sufficiently ‘distinctive’.
“This long-drawn-out dispute shows how difficult it is for brand owners to demonstrate that the appearance of a product, in other words its shape, or indeed its colour, is distinct enough for consumers to be in no doubt about its origin.
“Some could be put off from attempting to register shapes, colours and other distinctive marks in the future.”