Main menu

Liverpool:

+44 (0)151 600 3000

Manchester:

+44 (0)161 836 8800

Preston:

+44 (0)1772 823 921

Search form

Search form

A B C D E F G H I J K L M N O P R S T V W Y

What brands can learn from Nestle's KitKat trade mark defeat

What brands can learn from Nestle's KitKat trade mark defeat

Friday 19th May 2017

Nestle’s latest attempt to trade mark the KitKat’s shape was thwarted after a Court of Appeal in London ruled that the confectionary giant does not have an exclusive claim to the four-fingered design.  
 
Colin Bell, partner and head of intellectual property at Brabners, said: “The decision, while undoubtedly disappointing for Nestle, is perhaps not surprising. The decision is likely to have been a tight call that resulted from Nestle failing to prove that it is using the four-finger shape sufficiently as a trade mark as part of the KitKat brand. 
 
“This has been a long-running case over whether the design is exclusively associated with KitKat. A copycat product has been on the market since 1938 which would have diluted Nestle’s claim that the shape is capable of distinguishing KitKat from any other product or company. Moreover, the fact that the shape of the bar is not visible at point of sale, together with the fact that it is normally used alongside other branding elements such as the KitKat logo embossed on the bar, would also have weakened their case that the shape by itself is recognised as a trade mark.  
 
“While it is perhaps too late for KitKat, there are lessons for others to learn from this. Brands looking to trade mark the shape of a product need to make sure that, firstly, it is unique and capable of distinguishing their product from others. Secondly, that the shape is used prominently in the marketing and presentation of the product and, finally, that trade marks are enforced rigorously from the outset. As this ruling shows, it can be very difficult to protect and enforce retrospectively.”  
 
For more information about intellectual property and protecting your brand visit our brand protection hub or contact Colin Bell and the intellectual property team.