The UK High Court has recently rejected Nestlé’s efforts to secure trademark
registration for its infamous “four fingered” Kit Kat shape. The UK Intellectual
Property Office had originally found that the Kit Kat four fingered shape was
devoid of inherent distinctive character and had not acquired such a character
through use. Distinctive character is one of the key requirements in the
registration of a trademark. The inevitable question frequently asked by
commercial clients to Sellors is “what makes a trademark distinctive?” – it is in
essence whatever makes it capable of distinguishing the goods and services of
one organisation from another.

Despite Nestlé producing strong evidence that consumers already associated the
shape of its bar with the Kit Kat brand, the UK High Court dismissed Nestlé’s
appeal as it failed to show any evidence that consumers relied upon that shape
when identifying the product before purchase. The Court decided that this was
not enough and that it had to show that a significant proportion of the consumer
public would rely on the shape as opposed to any other trademark (here, the Kit
Kat name, logo or packaging) and Nestlé had failed to discharge this burden of
proof. Nestlé has confirmed that it is likely to appeal the decision with the
dispute ongoing since 2010.

The decision illustrates the difficulty in securing trademark protection for shapes,
even in those instances where the shape may have strong recognition amongst
the general public. The UK Court’s decision could lead to rival competitors
adopting similar shaped chocolate products in the future. However, they would be
wise to avoid using any other Kit Kat related trademarks, otherwise they may
face claims for trademark infringement and/or passing off.

If you have any queries in relation to Trademarks or IP Law, please contact Ronan Hynes, Partner on 061-414355 or [email protected]