Confectionary giant Nestlé will have to fight its case before the European Court of Justice if it wishes to establish a perpetual monopoly, via trade mark protection, in the distinctive, four-finger, shape of its best-selling ‘Kit Kat’ chocolate bars.
The product was first put on the market by Rowntree & Co Limited, under the name Rowntree’s Chocolate Crisp, as long ago as 1935 before changing its name, first to Kit Kat Chocolate Crisp and then simply to Kit Kat in the 1940s. It has since become one of the world’s most successful confectionary products.
Société des Produits Nestlé S.A. took over Rowntree plc in 1988 and argues that the shape of the Kit Kat bar has obtained such a prominent place in the public consciousness that it should be registered as a trade mark. However, trade rivals Cadbury UK Limited fiercely objected to the registration.
A hearing officer appointed by the Registrar of Trade Marks noted that other products consisting essentially of a number of joined chocolate fingers separated by breaking grooves were also on the UK market. He ruled that the proposed trade mark was ‘devoid of inherent distinctive character’ and was precluded from registration save in respect of cakes and pastries.
Neither Nestlé nor Cadbury were satisfied with the hearing officer’s decision and respectively appealed and cross-appealed. However, in referring the dispute to the European Court of Justice, the High Court begged the question, “In what circumstances can a trader secure a perpetual monopoly in the shape of a product by registering it as a trade mark?”
The Court expressed the view that registration of the trade mark should have been precluded altogether, even in respect of cakes and pastries. However, aspects of the law on the issue of shapes being registered as trade marks were ‘surprisingly’ unclear and a reference to Europe was therefore required.