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No Break for Nestlé’s Kit Kat Trademark Claim

For the past five years in the United Kingdom, chocolatiers Nestlé and their rival Cadbury have been locked in a legal battle stemming from Nestlé’s attempt to trademark the shape of the four-fingered Kit Kat chocolate bar.1

On July 8, 2010, Nestlé applied to register a trademark for the four-fingered shape of chocolate without the Kit Kat logo embossed on each finger.2

The application sought trademark protection in the categories of “chocolate; chocolate confectionery; chocolate products; confectionery; chocolate-based preparations; bakery goods; pastries; biscuits; biscuits having chocolate coating; chocolate coated wafer biscuits; cakes; cookies; [and] wafers.”3

In a June 20, 2013 decision, the United Kingdom Intellectual Property office “held that the trademark was devoid of inherent distinctive character, and had not acquired a distinctive character. . . .”4 Critical to the holding were the three features of the shape of the chocolate bar identified by the examiner which were (1) the basic rectangular slab shape, (2) the presence, position and depth of the grooves running along the length of the bar, and (3) the number of grooves, which, together with the width of the bar, determine the number of fingers.5

For the first feature, the examiner determined that the shape of the trademark did not differ significantly from the normal shapes in the sector (excluding cakes and parties).6 For the other two features, the examiner held that they were necessary elements to achieve a technical result, and thus not worthy of a trademark.7 As mentioned above, the examiner did grant the trademark to Nestlé for the four-finger shape in the cakes and pastries categories, as this was determined to be distinct in those sectors.8

After the decision, Nestlé appealed the denial of the trademark for the remainder of the categories, while Cadbury appealed the grant of the trademark in the cakes and pastries categories.9 This case has bounced around the court system, with the High Court of Justice Chancery Division requesting a preliminary ruling by the European Court of Justice (“CJEU”), culminating in a September 16, 2015 judgment.10 After reviewing the CJEU’s judgment, the Honorable Justice Arnold of the High Court of Justice Chancery Division released a January 20, 2016 ruling dismissing Nestlé’s appeal and allowing Cadbury’s cross-appeal.11

Justice Arnold held that the applicable trademark standard in this case was that “in order to demonstrate that a sign has acquired distinctive character, the applicant or trademark proprietor must prove that, at the relevant date, a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question (as opposed to any other trademark which may also be present).”12

Nestle had attempted to establish distinctiveness of its mark through its public survey in which it showed an image of the four-finger shape to members of the public and asked them to give their responses to what they saw.13 Over 90% of people involved in the survey answered “Kit Kat” in some manner.14

Justice Arnold was not persuaded by this argument, stating that this showed “recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery, but did not establish that consumers have come to rely on the shape of the four-fingers to identify the origin of the goods.”15

Among many of the arguments adopted by Justice Arnold was that there was no showing of evidence that consumers of four-finger Kit Kats rely upon the shape of the product to confirm the authenticity of the goods.16 Instead, he noted that the fact that Nestlé ensures that each finger is embossed with the words Kit Kat amounts to a clear recognition that consumers do not rely on the shape in this way, rather what they rely upon is the trade mark Kit Kat.17

Finally, Justice Arnold pointed to the additional fact that there were likely a number of similarly shaped products produced by other chocolatiers on the market in the years leading up to the relevant date, and that there was no evidence, however, that consumers thought that those products were Kit Kat products.18 This is fundamentally inconsistent with the trademark having acquired a distinctive character.19

This lengthy legal battle will likely continue on for years, as a Nestlé spokesperson has already said that they will appeal the latest ruling.20 Cadbury will, no doubt, continue to combat the trademark from coming to fruition, as this would grant Nestlé a “valuable monopoly and competitive advantage over other confectionery manufacturers.”21

  1. Jim Boulden, Nestle Fails to Trademark Kit Kat’s ‘Four Finger’ Shape, CNN Money (Jan. 20, 2016), 

  2. Société Des Produits Nestlé SA v. Cadbury UK Ltd, 2015 E.C.J. 13, 

  3. Id. at 15 

  4. Id. at 18 

  5. Id. at 19 

  6. Id. at 20 

  7. Id. 

  8. Id. 

  9. Société Des Produits Nestlé SA v Cadbury UK Ltd, [2016] EWHC 50 (Ch), (Jan. 20, 2016), 

  10. Id. 

  11. Id. 

  12. Id. 

  13. Patrick McCallum, European Court Denies Nestlé Four-Fingered KitKat Trademark After Cadbury Objection, IPWatchdog (Sept. 19, 2015), 

  14. Id. 

  15. Société Des Produits Nestlé SA v Cadbury UK Ltd, [2016] EWHC 50 (Ch), (Jan. 20, 2016), 

  16. Id. 

  17. Id. 

  18. Id. 

  19. Id. 

  20. Boulden, supra note 1. 

  21. Id.