Background

Kit Kat trademark case…

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…and the European Union Court of Justice trademark ruling

Kit Kat has recently been in the press following the news about the European Court of Justice (‘ECJ’) ruling that the four-fingered shape of the Kit Kat chocolate bar is not distinctive enough to be trademarked.

The Kit Kat bar originated in York in 1935 and was manufactured by Rowntree, (back then it was called the Rowntree’s Chocolate Crisp). In 1988 Nestle acquired Rowntree and in 2002 Nestle sought to obtain a European trademark for the snack. Since then there have been battles in various Courts which found in favour of one party and then the other. During these court battles one of the main opponents to the trademark was a company called Mondelez (which also owns Cadbury and Toblerone). They are the manufacturer of a Scandinavian four-fingered chocolate wafer bar called Kvikk Lunsj (pronounced Quick Lunch) originally manufactured in 1937. They believe that Kit Kat is not distinctive enough to trademark.

In July 2018, the ECJ dismissed an appeal brought by Nestle. The company had only provided evidence that the chocolate bar was well-known in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the UK. It had been instructed that the chocolate was not known well enough in Belgium, Ireland, Greece and Portugal and had to consider whether the three-dimensional shape of the bar could be retained as an EU trademark. Whilst it did not receive an EU wide trademark, Kit Kat does have trademark protection of the shape in France, Germany, Spain and Italy.

The ECJ has not completely dismissed Nestle’s claim but decided the trademark should never have been granted in the first place and referred the matter back to the EU Trademark office for them to try again.

Interestingly, whilst Mondelez argues that the shape of the four-finger Kit Kat is not distinctive enough to trademark, its own triangular Toblerone is!

What is a trademark and why are they so important to your brand and business?

A trademark is any sign which can differentiate the goods and services of one trader from another trader. Trademarks can be words, logos, pictures or a mixture of these so that the product or service that the trader uses can be recognised by their customers and not copied by others.

To register a product or service as a trademark it must include the following:

  • A distinctive character;
  • Not deceptive, or contrary to law or morality; or is
  • Not similar or identical to any earlier marks for the same or similar goods or services.

By trademarking your product or service you are able to protect it from being used by someone else. If your product or service is not protected, this could cause you loss of business or damage the reputation of your trade. If in the event this happened to you then you can bring legal action against the trader/company although you will have to show that the mark used is the same as or similar to your own registered mark on goods or services. Without a registered trademark you can still be protected by the law of “passing off”.

If you require legal advice or assistance in protecting your brand, please contact the Commercial Litigation team at Hunt & Coombs Solicitors on 01733 882800.


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