25 July 2018

Kit Kat Case Closed?

Kit Kat Case Closed?

The decision of the European Court of Justice, handed down on 25 July 2018 in relation to the shape of the four-finger KitKat chocolate bar, marks an interesting development in the treatment of shape marks under European Union Law. It has solidified the necessity for significant and wide-reaching evidence when attempting to claim exclusive rights in respect of reasonably commonplace or simple shape marks across the EU.

Companies within this sector are now unlikely to obtain trade mark rights in the shape of their products or packaging, save where those shapes depart significantly from the norm of that sector, or where they have become extremely well-known as an indication of the company in all member states of the EU.

This may mean that companies within the food and beverage sector will look to utilise more distinctive shapes for their products and packaging if they ultimately wish to obtain trade mark rights in the same in the future.

The decision will also send a message to companies in the sector that a bank of evidence should be created that shows sales, marketing and consumer perception within the various countries of the EU as early as possible so that this can be called upon to later support an application.

It is possible that the number of European Union trade mark applications for marks of this type may now decrease and companies instead focus on their core markets within the EU and apply to protect the shapes nationally in those countries, so as to avoid the evidence burden required at EU level.

One thing that should be appreciated however is that the decision does not automatically have the same effect in respect of other types of trade marks, such as word or logo marks. A non-distinctiveness objection must be overcome in the countries in which the mark is deemed to be non-distinctive and often, with word marks, language will play a big part in this.

As such, the territory for which evidence is required will be smaller and relate only to the countries in which that language is widely spoken or understood.

For further conversation regarding trade marks and commercialising intellectual property protection, please email Laura West on [email protected] 

Laura works with clients to ensure their IP strategy fits closely with their overall business strategy and aims to provide legal advice that has a strong commercial foundation. She has worked with a wide range of clients including those in the fashion, media, medical, construction, engineering and service-based sectors.