03 April 2017

Take a break

The Kit-Kat design is iconic and distinctive for chocolate lovers across Europe and the rest of the world, however, is it in the eyes of the law? In 2002 Nestle applied to register the shape of its chocolate bar as an EU trade mark. The registration was later challenged by its major rival, Cadbury, through an application for a declaration of invalidity on the basis that the shape was devoid of distinctive character.

The bad blood between Nestle and Cadbury was likely fuelled by Nestle’s successful opposition to Cadbury’s application to register the colour purple as a trade mark. The dispute has been unending and has extended to the national trade mark applications in the UK and Singapore.

The EUIPO and its Board of Appeal initially dismissed Cadbury’s application for a declaration of invalidity. However, in December 2016 the European General Court annulled that ruling, cancelling Nestle’s trade mark registration. This is despite research indicating that in 10 of the 15 EU countries who were Member States at the time of the application, the chocolate bar had acquired distinctive character, including the UK, Germany, Spain, France and Italy. This covered almost 80% of the EU population at the relevant time.

The parties appear to be exhausting every appeal process available and Nestle has now appealed to the Court of Justice of the European Union, which will now have to consider whether the registration should be cancelled.

This dispute demonstrates how high the threshold is to register a shape as a trade mark. It is likely to become even more difficult and more expensive to achieve in the future, as survey evidence may be required to prove the shape is seen as distinctive by more than 80% of the EU population. This means evidence may be required from countries comprising just 1% of the EU population. This will be especially problematic for future applications by UK businesses following Brexit, as their largest market (the UK) may be excluded from the survey evidence figures.