KitKat can be copied as Nestlé loses trademark protection

The shape of Nestlé's four-fingered KitKat bar is no longer protected after a European court called on Thursday for the trademark awarded to the Swiss company to be annulled.

The General Court in Luxembourg, the second-highest court in the EU, ruled that, for the confectionery bar to be protected, consumers needed to recognise – across all EU states – that it had a distinctive character.

The court concluded that, in registering the mark in 2006, the European Union Intellectual Property Office had "erred in law".

Can be imitated

Its decision means the KitKat shape can be imitated by other food producers.

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Cadbury Schweppes, now part of the US foods group Mondelez International, originally took the action in 2007 to demand the EU declare Nestlé's trademark invalid.

This is the latest spat between two of world’s largest confectionery companies over trademarks.

Thursday’s ruling revokes the 2006 registration of the trademark. The EU’s IP Office was ordered to bear its own costs and those incurred by Mondelez.

The court said that, when Nestlé had made its application in 2002, it failed to prove that KitKat had already gained distinctive character through use in all member states.

It was not enough “to show that a significant proportion of the relevant public throughout the EU, merging all the member states and regions, perceives a mark as an indication of the commercial origin of the goods designated by the mark”, the court said.

The court said the EU IP Office had found that KitKat had acquired distinctive character in 10 countries – Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the UK – but not in countries including Belgium, Ireland, Greece and Portugal.

Guy Wilmot, partner at Russell-Cooke law firm, said is was not surprising that KitKat's attempt to trademark the four-finger shape had failed.

‘Notoriously difficult’

“Shapes and colours are notoriously difficult to protect,” he said. “In order to be protected, a shape or colour has to be strongly associated with a given product or brand even if any packaging, logos or names are ignored. This is a difficult test to meet.

“Although in this case, it could be proved that most people associated the four-finger shape with KitKat in the UK, this was not true across the rest of Europe.”

Nestlé has the option of appealing against the decision before the EU’s highest court within two months.

The Nestlé ruling comes after Rubik's Cube last month lost a decade-long battle to secure trademark protection for its own distinctive character. – Copyright The Financial Times Limited 2016