The High Court publishes decision on Kit Kat case

21 January 2016

The High Court has published its decision in the Kit Kat case http://www.bailii.org/ew/cases/EWHC/Ch/2016/50.html

This case relates to Nestle’s application to protect the four-finger Kit Kat bar as a trade mark, which had been objected to by Cadbury and refused by the UK IP Office. The decision was appealed to the High Court where the judge had to decide whether the correct test for registering the product shape had been applied by the UKIPO. He asked the top EU court (the Court of Justice of the EU) to provide guidance on the test and this was published last year in September. According to the judge however, the guidance was “unclear” and he expressed doubts that the EU court “had fully understood” a key part of the question put to them.

In spite of his concerns about the failure of the EU court to provide clear guidance, the judge reached the conclusion that it was not enough for Nestle to show that consumers merely associated the shape of the bar with the Kit Kat product; instead, the company would need to show that consumers relied upon the shape to indicate where the products came from, irrespective of any other brands that appeared on the products. Nestle had not shown this reliance and so the UKIPO was right to have refused to register the shape. Nestle’s appeal was accordingly rejected.

This shows how difficult it is to register the shape of a product as a trade mark; consumers aren’t used to relying on the shape alone to identify the source of the product. While they may recognise the shape, consumers tend to rely upon the brand or even packaging design to correctly identify the product.

It seems likely that Nestle will appeal this decision.

Martin Krause

Martin Krause

Partner

Our Expert
Martin Krause
Martin Krause
Location: Bristol (UK)

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