Still No Break For Nestlé As Court Of Appeal Rejects Kitkat Appeal

The world of chocolate may appear sweet from the outside, but the recent UK Court of Appeal (CoA) judgment in Nestlé v Cadbury may leave a bad taste in the mouths of any traders and manufacturers hoping to register shapes as trade mark registrations. In this latest instalment of the 'chocolate wars' between confectionery heavyweights Nestlé and Cadbury, Lord Justice Kitchin rejected Nestlé's appeal against the decision of the High Court and upheld the ruling that the shape of the well-known KitKat chocolate bar cannot be registrable as a trade mark, finding that Nestlé had failed to prove that the shape had acquired distinctive character.

The current chapter in the ongoing 'chocolate wars', discussed in our previous article, can be traced back to Nestlé's application to register the shape of its four finger chocolate bar as a UK trade mark for a number of goods in Class 30, including chocolate products, cakes and biscuits. Cadbury was successful in UKIPO opposition proceedings filed against the application on the grounds that the shape of the trade mark was a feature resulting from the nature of the goods, and that the shape was necessary to achieve a technical result, allowing the consumer to break the bar into separate fingers.

Despite adducing evidence that the public recognised the shape as a KitKat, Nestlé failed to convince the UKIPO Hearing Officer, and the High Court in the subsequent appeal, that through the extensive use made of the shape over many years, the average consumer had come to regard the shape 'as a trade mark'. As Nestlé had not proved that the shape had come to be recognised as a guarantee of the commercial origin of the chocolate bar, the High Court ruled that it had not acquired the necessary distinctive character and therefore could not be registered.

The Court of Appeal's decision

Appealing the High Court decision to the CoA, Nestlé contended that a substantial proportion of the relevant consumers, when presented with the three-dimensional shape, recognised it as a KitKat, and understood the shape to indicate a specific product originating from a single source. The CoA confirmed that the relevant test, for determining whether an inherently non-distinctive mark has acquired distinctive character through use, is that a significant proportion of the relevant class of consumers perceive goods designated by...