Trademarking shapes ‘increasingly difficult’

An attempt to trademark the distinctive four-fingered shape of a KitKat has failed in the Court of Appeal.

The court held the design had ‘no inherent distinctiveness’, in Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358.

Guy Wilmot, partner at Russell-Cooke, said: ‘The appeal court’s ruling indicates that shape marks are going to be increasingly difficult to obtain. The question was whether the public strongly associated the four finger shape itself with KitKat, even if all other branding (including the KitKat logo) is removed and also whether the public treats the shape as a “badge of origin”. ’

Wilmot added that the court found that while the public may associate the shape with KitKat bars they did not use the shape of the bar alone to conclude that the product is a KitKat.

‘The court was also concerned that if they granted the trade mark Nestlé would have a potentially permanent monopoly on the four finger shape, which they felt would be unfair given that KitKat had never used the shape alone to promote KitKats,’ he added.