Leech Tishman

 

EU Advocate General Melchior Wathelet has issued an opinion that EU law does not allow for the registration of the shape of a Kit Kat bar as a trademark.

The opinion from the Advocate General is non-binding, but the Court of Justice of the European Union follows it in most cases.

Cadbury and its rival Nestle have been fighting over the right to sell chocolate in the Kit Kat’s distinctive four-bar configuration.

The ancestor of the Kit Kat bar was first sold in the UK in 1935. The company that made it was acquired by Nestle in 1988.

Nestle applied to register the shape as a trademark in 2010. Cadbury filed a notice of opposition to the application.

An examiner rejected the application in 2013. Nestle appealed this decision and the UK High Court of Justice of England & Wales sent the matter to the Court of Justice of the European Union.

Under UK law, something may not be registered as a trademark

if it consists exclusively of the shape which results from the nature of the goods themselves or of the shape of goods which is necessary to obtain a technical result.

Chocolate War

Cadbury and Nestle have been waging a chocolate war for some time. Nestle worked to prevent Cadbury from registering a trademark for Pantone 2865c – the purple color used by Cadbury on its packaging and wrappers.

A UK appeals court ruled in Nestle’s favor in 2013, finding that it would put Nestle and other competitors at a disadvantage if they were prevented from using the color.

The EU decision is here and the previous UK decision is here.

Takeaway

It is also problematic in the US to protect under trademark law designs that have functional as well as aesthetic features.

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Photo Attribution: “KitKat” by Scott Ehardt – Own work. Licensed under Public Domain via Wikimedia Commons.

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