Cadbury successfully opposes registration of Nestlé's Kit Kat shape mark

In Société des Produits Nestlé SA's application; opposition of Cadbury UK Ltd (O-237-13, June 20 2013), the UK Trademark Registry has rejected Société des Produits Nestlé SA’s application for the registration of a three-dimensional (3D) shape mark, except in relation to cakes and pastries.

Swiss-based food giant Société des Produits Nestlé SA has been ‘enthusiastically’ filing trademarks throughout the European Union in recent times - one of its key objectives has been to protect a 3D shape mark for its Kit Kat chocolate wafer product.

The shape mark applied for in the United Kingdom, depicted below, covered various goods in Class 30 of the Nice Classification, ranging from chocolate products and chocolate confectionery to pastries, cakes and biscuits.

Cadbury UK Ltd opposed the application on a number of grounds. Hearing officer Allan James considered two in particular:

1. Did this mark consist exclusively of the shape of the goods which was necessary to obtain a technical result (ie, did the shape assist in the product’s manufacture and facilitate the division and consumption of the goods)?
2. Was the mark devoid of distinctive character and, if it did not have distinctive character in the first place, had it acquired it?

Allan James considered Cadbury's technical functionality objections at some length. He identified the essential features of the mark applied for as being:

• the rectangular ‘slab’ shape (including the length, width and depth and their relative proportions);
• the breaking grooves along the length of the bar (including their presence, position and depth) which divide the bar into ‘fingers’; and
• the number of these grooves.

Having completed this task, he concluded as follows:

“The exclusion under Section 3(2)(b) [of the Trademarks Act 1994] therefore applies where the essential features of the shape are attributable only to a technical result. Other minor arbitrary features which make no real impact on consumers do not prevent the exclusion applying if the essential features of the shape are caught by the exclusion.”

Having had the benefit of cross-examination of witnesses from both parties who had given evidence about the functional aspects of the shape represented by the mark, the hearing officer concluded that:

“i) The basic rectangular ‘slab’ shape represented by the mark is a shape which results from the nature of moulded chocolate bars or moulded chocolate biscuits sold in bar form;

ii) The presence of breaking grooves is a feature which is necessary to achieve a technical result;

iii) An angle of more than 8-10 degrees for the sides of the product, and for the breaking grooves, results from the nature of moulded chocolate products and the depth of the grooves is necessary to achieve a technical result;

iv) The number of breaking grooves and fingers is determined by the desired portion size.”

In finding that the mark consisted of a functional shape, Allan James rejected the submission that the shape was an aesthetic design. The goods sold which incorporate the shape are wrapped in such a way that the consumer does not see the shape until after they have purchased them. The fact that the product is designed to be broken up and eaten accounts for the breakability of separate fingers (this breakability features prominently in Nestlé’s classic advertising slogan: “Have a break, have a Kit-Kat”). Thus, Nestlé’s shape mark could not be registered for the goods applied for, with the exception of cakes and pastries.

The shape was also found to be devoid of distinctiveness, given that it was a shape commonly found for chocolate bars and biscuits (though not for pastries and cakes). But had this mark acquired distinctiveness through use? Nestlé adduced evidence from two surveys, although its own survey expert admitted that the first survey was so flawed that it would not stand up to serious perusal.

Allan James did not stop until he had taken the opportunity to reiterate the purpose of trademarks:

“trademarks are intended to permit consumers to make informed choices between the competing goods of different undertakings in the course of trade. Therefore showing that the public know who usually makes goods of a particular shape, without also showing that such recognition plays some part in the trade in such goods, does not show that the shape has become a trademark for the goods.”

Plainly, it is not enough to demonstrate that a significant proportion of the public recognises the shape in question without also showing that those consumers rely upon the shape to identify the origin of the goods.

The hearing officer’s final word on acquired distinctiveness was as follows:

“They [consumers] associate the shape with Kit Kat (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

As this result presently stands, chocolate confectioners in the United Kingdom are free to produce rectangular slabs of chocolate, complete with breakable elongate parts. However, the parties in this case have a habit of appealing, so this may well not be the last word on this particular exchange of views.

Jeremy Phillips, IP consultant to Olswang LLP, London