Nestlé’s attempt to secure trade mark protection in Europe for the shape of its four-fingered (KitKat) chocolate bar has been officially blocked by a decision at the Court of Justice of the European Union (CJEU) today.
Nestlé first sought trademark protection in 2002 for the KitKat shape (‘four trapezoidal bars aligned on a rectangular base’, according to an EU legal adviser) at the European Intellectual Property Office (EUIPO).
Rival Mondelēz, owner of brands including Cadbury, Milka and Oreo, and the Leo bar - another four-fingered chocolate treat - initially challenged the move.
Since then, the dispute has taken many twists and turns.
Last year, the Court of Appeal in the UK rejected Nestlé’s attempt to seek trademark protection for the shape of its KitKat chocolate bar because the shape trademark has “no inherent distinctiveness.”
Not willing to stop there, Nestlé decided to appeal the ruling by seeking the opinion of the CJEU. Earlier this year, an Advocate General Opinion (AGO) was given advising that Nestlé's appeal should be thrown out and its EU trademark should be annulled.
Today’s decision upholds the earlier AGO and Nestlé’s appeal has been thrown out. As a result, the EU trademark it currently holds will be revoked.
A Mondelēz spokesperson said: “As previously noted, our contention is that the shape of the KitKat bar should not be protected as a trademark throughout the European Union. We are pleased that the decision of the European Court of Justice supports our position.”
Tania Clark, partner and trade mark attorney at intellectual property firm, Withers & Rogers, said:
“The ECJ has given the last word in this hotly-contested dispute between two rival chocolatiers, which has gone on for more than a decade.
“Despite attempting to provide evidence that the four-fingered shape of its chocolate bars is instantly recognisable to many people as a KitKat, Nestlé has been unable to convince the courts of its right to exclusivity, particularly as other four-fingered chocolate bars, such as the Norwegian, Kvikk Lunsj, have also been sold in Europe for many years.
“This dispute demonstrates the lengths that brand owners will go to in order to protect the shape of their products and prevent competitors from copying them. Whilst this protection can be difficult to achieve, they are unlikely to stop trying.”
Distinctive in UK
Lucy Harrold, an intellectual property lawyer and retail expert at Keystone Law, said: "The shape of the KitKat bar is not ‘coming home’ with European trade mark protection.
“In 2017, Nestlé also failed to obtain a UK trade mark over the shape of the four-fingered bar in the English Court of Appeal because it was held that consumers did not rely on the shape as signifying the bar came from Nestlé.
“Ironically, in the European decision, the Court does state that the bar is ‘distinctive’ in the UK, contrary to the English Court’s decision. Today’s decision, however, turns on a different point, namely, that Nestlé has failed to prove that the shape of the bar has become distinctive of their goods across the EU.
“This affirms a very high hurdle for EU-wide protection of brands (arguably higher than previously thought) and has implications for other EU-wide marks which may not be able to prove they have acquired distinctive character right across the EU."