SociÃ©tÃ© des Produtis NestlÃ© SA v Cadbury UK LTD Trademark case
Société des Produtis Nestlé SA v Cadbury UK LTD
Article 3(1)(i) of Directive 2008/94/EC provides that a shape cannot be registered as a trade mark if the shape is one that is a result of the goods themselves. Article 3(1)(ii) of Directive 2008/94/EC further provides that if the shape is one that is necessary to obtain a technical result it cannot be registered as a trade mark.
Essentially if the shape is a result of the goods themselves or if the shape is functional to the product it will not be capable of trade mark registration. This has proved not to be in Nestlé’s favour.Nestlé attempted to register its four finger chocolate bar the KitKat as a 3D trade mark in class 30 for chocolate. It should be noted that the trade mark application does not have the word KitKat embossed in the chocolate bar like the product.
The application was published in the Trade Mark Registry for opposition. Guess what… Cadburys opposed the application. It was said that the mark lacks distinct character. However if a mark has gained a distinct character through use before the application it may be registered Article 3(3) Directive 2008/94/EC. In fact the chocolate bar was initially known as the chocolate crisp. It was first sold in England in 1935 but after world war one it became the KitKat.
It was held by Mr Justice Arnold that the rectangular “slab” of chocolate is a shape that is a result of the goods themselves. Stating that this is no doubt why many chocolate bars take on this shape. He went further with the fact that the groves for the “fingers” in the KitKat bar are to obtain a technical result. The depth and angles for the fingers are necessary to obtain the technical result in the chocolate moulding process. Elaborating that the groves are a compromise to allow the bar to stay together and also allowing the consumer to break them into separate fingers.
The positive side of this judgement is that Nestlé does not have a monopoly on the four fingered chocolate bars. Therefore it will still be possible to buy the more inexpensive KitKat rivals found in many supermarkets.
2nd year Law Student at Southampton Solent University