The Four-Finger Shape Saga

The judgment suggests that, essentially, when consumers are presented with the shape of the four-finger bar, and that mark alone, that the majority of those consumers must perceive Nestlé as the only possible source for the product in question. Nestlé was not able to prove that. The ruling represents a blow for the Swiss chocolate giant who has been locked in a long legal battle with Cadbury not only over shape but also colours of its confectionary. In fact, Nestlé previously blocked Cadbury from trademarking a particular purple shade that it uses on its chocolate wrappers. Unsurprisingly, the US-owned confectionery giant fought back and objected to Nestlé's 2010 attempt to protect the KitKat's shape.

Effectively last week’s ruling means that competitors are now allowed to produce cheaper alternatives that are the same shape and size as KitKats and also supermarket will be able to produce copycats own-brand treats. Rivals could now potentially undercut the Swiss food and drinks giant in the highly competitive chocolate market – even though the Swiss giant has been selling the chocolate bars for years.

This does not seem to be the end of the battle as KitKat stated that it would appeal the decision. The Swiss giant believes that the shape of its KitKat bar deserves to be protected as a trade mark in the UK as that iconic shape, used in the UK for more than 80 years, is well known by consumers.

The KitKat judgment proves how difficult it is to register shape marks. Although not impossible (Toblerone managed to do so) London Taxi Company (LTC) has also just lost a trademark battle with an eco-taxi company over the distinctive black cab design.

The judge found that LTC’s trade marks should not have been registered because they were not inherently distinctive, as simply variations of the typical shape of a taxi, and that they had not acquired distinctive character through use. This case was the first opportunity for the judge to apply his interpretation of the CJEU’s ruling in the KitKat case outside of that case. It was found that people did not perceive LTC’s taxis as originating from LTC because of their shape, as opposed to any other trade mark present, such as the badge on the front of their taxis.

For more information, please contact John North, Stephen Welfare or Irene Trubbiani Montagnac.