The confectionery trade mark war between Cadbury UK Limited (Cadbury) and Société des Produits Nestlé SA (Nestlé) continues. On 20 June 2013, the UK Intellectual Property Office refused Nestlé’s application to register a three dimensional shape mark for its four-fingered KitKat product in respect of chocolate, upholding Cadbury’s opposition to the mark. Download 20 June 2013 Decision. The Decision contradicts the recent ruling of the second appeal board of the Office for Harmonization in the Internal Market (OHIM) in December 2012, which allowed Nestlé its EU wide Community Trade Mark, finding that the KitKat shape had acquired a distinctive character due to its continued use and presence in the market. Download Dec. 11, 2012 Decision. Nestlé applied to register the UK mark on 8 July 2010 to cover goods in Class 30 including chocolate, chocolate confectionery, chocolate products, biscuits, cakes and pastries. The Registry published the application due to the distinctiveness and prior use made of the shape. Cadbury opposed the mark on a number of grounds, arguing that the KitKat shape was customary in the confectionery sector and that the look of the product simply assisted its technical production and consumption. The hearing took place on 18 March 2013.

Inherent or acquired distinctiveness?

The UK IPO Hearing Officer found that the KitKat had a functional rather than an aesthetic design which was commonly found in chocolate bars and biscuits (but not cakes and pastries). In his view an average consumer without extensive experience of the product would see four conjoined chocolate fingers separated by grooves to assist consumption. The IPO also decided that the mark had not acquired distinctiveness. Although recognisable to a significant proportion of the relevant public, consumers relied on the word mark “KitKat” and associated pictorial marks to identify the origin of the product. The IPO considered that the shape was considered devoid of distinctive character and inherently unregistrable.

Is the shape necessary to achieve a technical result?

The essential features and dimensions of the KitKat were considered – its trapezoid slab shape, its 8-10 degree sloping sides and the breaking grooves separating the four fingers of the biscuit. The IPO decided that the shape and sides of the product ensured the optimal chocolate to biscuit ratio and assisted the chocolate de-moulding process. The breaking grooves were necessary to achieve a technical result allowing consumers to break the product up for consumption and the number of fingers were considered to be “the desired portion size.” Nestlé’s application was rejected, except in relation to cakes and pastries. 20 June 2013 Decision

The OHIM decision

The IPO referred to the recent OHIM appeal board decision which upheld Nestlé’s EU Community Trade Mark for the same KitKat shape, finding that the KitKat shape had acquired a distinctive character due to its continued use and presence in the market. The decisions differed as the IPO based its conclusions on the cross examination of the experts and witness evidence put before it. The fact that Nestlé’s CTM was registered in respect of a different set of Class 30 products (sweets, bakery products, pastries, biscuits, cakes and waffles) was also used to justify its stance. OHIM Dec. 11, 2012 Decision

Implications

Although Nestlé may try to appeal the decision, it does highlight the fact that a national court or registry of a Member State may well come to a different decision to OHIM, particularly where, as in the UK, the national registry may see significantly more evidence, including witnesses under cross-examination. The fact that OHIM was prepared to find that the shape had acquired a distinctive character in respect of biscuit products, whereas the UK IPO was not, may be difficult to reconcile. Cadbury and Nestlé have been fighting for some 7 years in relation to Nestlé’s registrations over aspects of its KitKat product, this dispute over the shape registration being the most recent battle. It illustrates the importance big consumer brands attach to protecting all ‘brand’ aspects of key products. Sources: In the matter of application 2570766 by Société des Produits Nestlé SA and opposition 101495 by Cadbury UK Ltd; Office for Harmonization in the Internal Market (Trade Marks and Designs), Case R 513/2011-2, Société des Produits Nestlé SA and Cadbury Holdings Limited

This update was prepared by Lâle Kemal (lale.kemal@nortonrosefulbright.com / +44 20 7444 2313) Norton Rose Fulbright UK’s Intellectual property group.