Is Kit Kat’s trade mark saga set to take a break?

For over a decade Nestlé has attempted to protect Kit Kat’s three dimensional shape, with rival Mondelez fighting hard to prevent its success.

Last Wednesday marked the latest chapter in the lengthy legal battle, as the European Court of Justice dismissed the confectionary giant’s most recent appeal to safeguard the shape of its famed bar.

In the ruling the court said that Nestle had failed to demonstrate that the bar’s shape was of distinctive enough character in all the countries it was attempting to obtain a trademark in.

This latest blow comes 12 years after Nestle originally secured a trademark for its four-finger bar in 2006 from the EUIPO. This prompted Cadbury owner Mondelez, which produces the similarly shaped Leo Bar and Norwegian Kvikk Lunsj, to appeal against the decision.

The case returned to court in 2016 with a lower EU court annulling the original ruling, and challenging Nestle to demonstrate that Kit Kat’s shape was “distinctive enough through use” in every EU country it sought protection in.

In the latest ruling it was disclosed that Nestle had proved the bar’s distinctiveness in 10 nations, but failed in Belgium, Ireland, Greece, and Portugal. As a result, Nestle’s trademark protecting the shape of its Kit Kat could now be in jeopardy.

The ruling could be significantly detrimental to the confectionary company, as own-brand imitations could soon start appearing on supermarket shelves, looking to capitalize on Kit Kat’s success.

Nestle’s latest legal battle has once again ignited discussion throughout the intellectual property community about what criteria is required to gain EU-wide protection for shapes.

Rosie Le Breton, trainee trademark attorney at Wynne Jones IP, said the case highlights “challenges faced by companies whose product success is intrinsically tied into their ability to be distinctive”.

She said: “This is the latest ruling in what has been an increasingly complex and legally significant case for both Nestle and Mondelez.

“Patent attorneys and those across the IP industry have been watching the unfolding drama keenly for the past 12 years, as the result could set a vital legal precedent for how registered shape marks are considered in future cases.

“Alongside the IP industry, the dismissal will also no doubt have a ripple effect across the business world, from retail to fashion and beyond. Companies could now be set to reassess realistically just how distinctive their own brand shapes are and if they could withstand a legal challenge.

“Furthermore, the ruling could have an even wider impact on the design of new products, with brands intentionally creating uniquely distinctive shapes in a bid to avoid a Nestle vs Mondelez style battle.”