26 June 2017

The legal battle between Cadbury and Nestlé over Nestlé’s KitKat is a well-known and long-running dispute that has been extensively covered in the legal and wider press. Nestlé attempted to register a four-fingered 3D shape in class 30 for goods, including chocolate bars, with the UK Intellectual Property Office (UKIPO). Cadbury then challenged the validity of Nestlé's trade mark application on the basis that it lacked distinctive character, and the two companies have been fighting it out in the courts ever since.

The UKIPO found that the shape of the KitKat was not distinctive enough to be granted trade mark status under Article 3(3) of the Trade Mark Directive and this refusal has now been upheld by the Court of Appeal. Floyd LJ’s explanation of the reasoning behind this was very easy to understand:

“I have found it helpful to have in mind a basket of unwrapped and otherwise unmarked chocolate bars, in the shape of the mark applied for, available for selection in a shop or supermarket. For there to be acquired distinctiveness, the consumer must perceive these goods as being KitKats, or as originating from the people who make KitKats, and not from others. A perception that they looked like KitKats is not enough. Acquired distinctiveness carries with it an indication of exclusive trade origin.” (our emphasis)

Non-traditional marks such as shapes are difficult to register

Shape marks remain difficult to obtain, with companies such as the London Taxi Company (black cabs), Lego (building bricks) and Lindt (chocolate bunnies) failing to obtain registrations for their well-known designs. In contrast, Coca Cola (bottle shape) and Toblerone (pyramid-shaped chocolates), have enjoyed a monopoly right in their shape marks for decades.

Shape marks are difficult to obtain for good reason. In contrast to other forms of IP protection, trade marks give brand owners exclusive and unfettered monopoly rights. There is a tension between this and the desire to promote innovation and competition in design. With this in mind, seeking other forms of IP protection for a 3D design (such as registered design protection) may be more appropriate.

Practical advice for registering shape marks

There is no definite way to ensure that a shape mark will qualify for trade mark protection, but the following are some practical points to consider:

  • Do seek specialist legal advice to assess the merits and risks of seeking trade mark protection, and whether other forms of IP protection (e.g. design protection) may also be appropriate to protect your shape.
  • For the shape to qualify as having distinctive character it has to depart from the norm or customs of the sector. Conduct research within your relevant sector – can you show that your shape mark is truly distinctive to anything else in the market?
  • The shape alone must act as the ‘badge of origin’ for the product and distinguish it from your competitors’ products. It may be very difficult to demonstrate this if, as is usually the case, the shape of the product is promoted in conjunction with its brand name, since the brand name is what tends to act as the primary indicator of origin in the consumer's mind.
  • If you are promoting a distinctively-shaped product, educate the public through marketing campaigns which focus on the shape of the product and ensure that the shape is shown separately to, not in conjunction with, the brand name. This may assist in increasing consumer reliance on the shape of the product to help them identify where it originates from.
  • When packaging a product, ensure that the shape of the product can be clearly seen by consumers to influence their buying decision before purchasing the product.

If you would like any advice or further information on this topic, please contact Burges Salmon’s IP team, which is led by Jeremy Dickerson.

Key contact

Jeremy Dickerson

Jeremy Dickerson Partner

  • Head of International 
  • Head of Intellectual Property, Media and Sport
  • Defamation and Reputation Management

Subscribe to news and insight

Intellectual Property Disputes

Our intellectual property disputes specialists provide pragmatic and commercial intellectual property dispute resolution.
View expertise