Nestlé victorious in KIT KAT dispute

India

By order dated April 22 2013, the Intellectual Property Appellate Board (IPAB) ruled in favour of appellant Société des Produits Nestlé SA in a dispute involving the trademark KIT KAT. The IPAB allowed the appeal filed by the appellant against an order of the registrar refusing its applications for KIT KAT, and dismissed two appeals filed by respondent Kit Kat Food Products against an order of the registrar also refusing its applications.

At issue before the IPAB was:

  • who is the proprietor of the trademark KIT KAT in India; and
  • whether the adoption of the mark KIT KAT by the respondent was in good faith.

To support its case, the appellant argued that the mark KIT KAT was a coined term which has no meaning. It also argued that the respondent had adopted the trademark KIT KAT only in 1991, while the appellant had been using the trademark KIT KAT internationally since 1935 for wafer chocolate biscuits, which had been imported into, and sold in, India since 1940. The appellant also relied on the registration of the word mark KIT KAT (No 8982), which had been obtained by its predecessor as early as December 1 1942. The appellant contended that the adoption of the mark KIT KAT by the respondent was dishonest and the latter was not/could not be the proprietor of the trademark KIT KAT.

In response, the respondent alleged that the appellant had started manufacturing goods in India under the mark KIT KAT only since 1995. It also argued that the mark KIT KAT is an invented word and is the name of an old part of Cairo. It contented that the appellant was manufacturing chocolates, rather than chanachur (ie, the respondent's goods). The respondent argued that it had not adopted the mark KIT KAT dishonestly, as its adoption of the mark was prior to the use of the trademark KIT KAT by the appellant.

The IPAB held that the appellant had been using the trademark KIT KAT outside of India since 1935 and in India since 1987, which was prior to the use of the trademark KIT KAT by the respondent. The IPAB thus found that the appellant was the prior user of the trademark KIT KAT. The IPAB also noted that the public would associate the trademark KIT KAT with the appellant, rather than the respondent.

The following aspects are noteworthy:

  • The IPAB found that the respondent had given no satisfactory reason for adopting the mark KIT KAT; therefore, the adoption of the mark by the respondent could not be considered to be in good faith.
  • The IPAB found that permitting the respondent to restrict the sale of its goods to West Bengal would amount to encouraging the adoption of other parties' trademarks.   
  • The IPAB concluded that the appellant had been the first user of the mark worldwide. It thus agreed with the following proposition: the fact that a party is not the first user of a mark in India is irrelevant if it is the first to use the mark worldwide.

Vaibhav S Keni, Legasis Partners, Mumbai

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