Article May 23, 2017

Chocolate in 3D

Here is some recent legal news that we didn’t mind sinking our teeth into…

It was revealed last week that Nestle failed in a bid to register 3D trademark rights for their four-finger Kit Kat chocolate bar in the United Kingdom. The 2010 European trademark was never successfully registered in the UK as a result of strategic legal proceedings brought by Mondelez International, the owner of competitor Cadbury’s.

Cadbury’s 2013 opposition proceedings were successful in challenging the Nestle trademark, as it failed to demonstrate sufficient ‘acquired distinctiveness’. In judgement, the Hearing Officer for the UK Intellectual Property Office ruled the 3D shape of the four-finger Kit Kat was not exclusively relied upon by consumers to identify the chocolate bar as a Kit Kat, because Kit Kats were almost always sold within an opaque wrapper with logo, and were rarely shown in marketing activities in their full four-finger configuration.

In Nestle’s 2014 High Court appeal, the court referred the case to the European Court of Justice (CJEU) to clarify the law on acquired distinctiveness. CJEU delivered their response in 2015.

On this basis, in 2016, the High Court was able to hear an appeal of the original decision by Nestle, and confirmed the law had been correctly applied by the Hearing Officer.

Last week, and a full 7 years after the initial trademark application, the Court of Appeal also concluded that the 3D shape of the Kit Kat product was not deemed to be sufficient, on its own, to identify a Kit Kat.

Why register a 3D trademark instead of a patent or design right?
After a drawn out, and costly, set of legal proceedings, why would an organisation go through all this bother just to register a trademark?

Trademarks can have an indefinite period of coverage, provided they are renewed at required intervals, whereas a patent or design right would provide a rights holder with a fixed term monopoly of (just) 20 years and 25 years respectively. As such, protection under a trademark can provide an organisation with a very valuable monopoly. In this example, the bar-shaped breakable chocolate is clearly a popular shape and has been sold since 1935 – already well beyond a 20 or 25 year term. Without this trademark protection other competitors, such as supermarkets, can theoretically manufacture their own cheaper four-finger chocolate wafer bars without being in breach of any intellectual property rights – provided they don’t pretend they are Kit Kats as this would be ‘passing off’.

Other recent cases involving 3D trademarks include Lego (successfully) and Rubik’s cube (unsuccessfully) registering their respective products. It is certainly not easy to obtain intellectual property rights protecting products in the form of a 3D trademark.

Other litigation
Parallel proceedings are underway, with Cadbury’s seeking a full invalidation of Nestle’s equivalent four-finger chocolate European Trademark. And this is not the first time the two have come up against one another. In 2008, Nestle filed an opposition to Cadbury’s attempt to trademark their well-known version of the colour purple. It clearly shows how one set of legal proceedings can strongly influence the likelihood of another.

So, the next time you purchase a Kit Kat or four-finger configuration chocolate wafer bar from a UK retail outlet, you can consume it in the knowledge you are eating something that remains unprotected by a 3D trademark. Or maybe that’s just us…!