Take a Brexit, have a KitKat?
As Nestlé Trade Mark application fails, is this one of the
early indicators of what the post-Brexit fault lines might look
like in Intellectual Property case law?
On 17 May, the Court of Appeal upheld the High Court decision of
last year (as well as the earlier decision of the UK Intellectual
Property Office of 2010) to reject Nestlé's application for
registered trade mark protection in the form of a 3D "shape" mark
for its four-finger KitKat.
The Judge in the High Court had held that while the four-finger
shape was undoubtedly associated with KitKat, it had not acquired
distinctive character as a "badge of origin" of the goods in its
own right and that since the shape was well hidden by the packaging
(aspects of which undoubtedly are relied on by consumers as
indicating the product's origins), the company had not made it a
major selling factor of the product.
Nestlé's application had been challenged by Cadbury, or rather
by its parent company Mondelēz International, as part of a
long-running battle between the two companies over this attempt to
secure a shape mark for the four-finger KitKat. It is no
coincidence that Mondelēz subsidiary Freia has its own
four-fingered chocolate snack bar Kvikk Lunsj ("Quick Lunch") which
it has been selling in Norway since 1937.
In December of last year, the EU General Court annulled a
finding of the EU Intellectual Property Office (EUIPO) granting
Nestlé trade mark protection for the shape across the EU, on the
basis that the EUIPO had failed to fully assess whether the shape
had acquired distinctiveness in every member state of the EU.
However, significantly, the General Court did indicate its
belief that the shape had acquired such distinctiveness in the
The importance of the Court of Appeal's decision, therefore, is
in two respects;
- It seems to indicate a hardening of the Court's stance towards
"non-traditional" trade mark applications (shapes, sounds, smells,
packaging) which will no doubt be more difficult to obtain and to
maintain within this jurisdiction following the
ruling. This seems to put the Court somewhat out of step
with current commercial trends, with an increasing number of brand
owners looking for non-traditional signifiers of their brand, and
gives greater importance to the need to give careful thought and
obtain sound advice before embarking upon a programme of
applications / registration.
- It would appear that the Court of Appeal (which would of course
have had regard to the earlier decision of the EU General Court,
though not being bound to follow it) has chosen to deliberately
take its own, divergent view of acquired distinctiveness in the
case of such non-traditional marks and perhaps suggests that a
different approach will have to be taken by brand owners within the
UK than in the EU, once the "Brexit" process, which has now finally
begun, is completed.
Whatever your stance may be on the question of Brexit, it
will be interesting to see how case law in this area within the UK
develops, once our Judges become entirely "free" from the
corresponding jurisprudence which develops in Europe.
Posted on: 22/05/2017
This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.
Back to News articles