Battle of the bars: CMS client Nestlé loses fight to trademark KitKat bar

Nestlé has had its latest attempt to trademark the shape of its famous four-fingered KitKat bar thrown out by the High Court after judges felt its reliance on “distinctiveness through use” fell short.

Nestle, chocolate

Nestlé had argued that the shape of its bar was unique to its brand and so should be protected by law.

The judgment, however, handed down by the Chancellor of the High Court, Lord Justice Kitchin, and Lord Justice Floyd, found that the shape of the chocolate bar “had nothing to do with the informed choices that consumers make between similar products”.

Kitchin J said that he agreed with an earlier analysis of Nestlé’s case heard by Justice Arnold in 2015, saying: ” Showing that the public know who usually makes goods of a particular shape, without also showing that such recognition plays some part in the trade of such goods, does not show that the shape has become a trade mark.”

The ruling will be a blow to Nestlé, which has been engaged in a decades-long battle of the bars with Cadbury, who have fought the attempt since Nestlé tried to trademark the four fingers in 2010.

In 2015, The Lawyer reported that the European Court of Justice (ECJ) threw out Nestlé’s attempt to trademark its KitKat bar, ruling that the shape was not distinctive enough for consumers to associate it with the chocolate-covered wafer.

Cadbury, however, will be celebrating the decision after it had its own attempt to trademark its iconic purple colour thwarted by its rival, Nestlé. In 2013, Nestlé blocked Cadbury’s attempts to register the shade of purple used for its Dairy Milk Bars, which it has been using since 1914.

Cadbury’s owner, Mondelez, said: “We are pleased with the Court of Appeal’s decision today and welcome their conclusion.

“As we have previously stated, we do not believe the shape of the KitKat bar should be protected as a trademark in the UK.”

Nestlé turned to CMS Cameron McKenna partner Tom Scourfield, who instructed barrister Simon Malynicz of Three New Square for the ECJ battle.

Cadbury, meanwhile, went to Bristows partner Paul Walsh who instructed Tom Mitcheson QC, also of Three New Square.

A source close to the case said that the latest defeat for Nestlé wasn’t necessarily the final defeat. “You may find that this isn’t over and it ends up going to the Supreme Court,” the source told The Lawyer.

The legal line-up

For the appellants, Société des Produits Nestlé SA
Blackstone Chambers’ Michael Bloch QC and Three New Square’s Simon Malynicz, instructed by CMS Cameron McKenna partner Tom Scourfield

For the respondent, Cadbury UK Ltd
Three New Square’s Tom Mitcheson QC, instructed by Bristows partner Paul Walsh