KitKat trade mark appeal rejected by European Court of Justice

Following a decision made by the European Court of Justice (ECJ), Nestle’s popular KitKat chocolate bar will lose its status as an EU-wide protected trade mark.

Nestle appeared before the ECJ in a bid to overturn an earlier ruling which came about following a long legal battle with UK rival Cadbury.

Initially, Nestle applied for EU trade mark protection for the “three-dimensional shape” of its four-fingered KitKat bar to the EU Intellectual Property Office in 2002 – and its application was granted in 2006.

Despite the granting of its application, the trade mark has been challenged repeatedly by US company Mondelez, the owner of Birmingham-based Cadbury.

A previous court ruling found that the KitKat shape presented “no inherent distinctiveness,” and Nestle’s attempts to trade mark the shape in the UK were deemed not to be compliant with EU law.

Nestle’s attempts to appeal this ruling at the European Court of Justice have also failed, after it was decided that the chocolate was not ‘well known’ enough across all EU nations to warrant its protected trade mark status EU-wide.

Nestle provided evidence to the ECJ that the chocolate had a strong reputation in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the UK, nevertheless this was deemed to be insufficient to warrant EU-wide protection.

In the eyes of the advocate general, the chocolate manufacturer was unable to prove that the KitKat bar was well known for its iconic shape in the likes of Belgium, Greece, Portugal and Ireland.

Due to this, Judges dismissed the appeal and it will now be possible for other chocolate manufacturers to imitate the KitKat shape across the EU.

Commenting on the outcome of the case, a Nestle spokesperson said: “We believe [the attorney general’s] final conclusion is based on incorrect factual findings.

“Nestle did submit sufficient evidence to prove acquired distinctiveness of its iconic KitKat four fingers shape to meet the advocate general’s proposed threshold, including in the few countries where evidence was challenged.”

Ensuring trade marks are properly planned can help to reduce the substantial costs that a contested application often leads to, providing the opportunity to highlight marks which may carry a conflict risk. If you are considering registering the intellectual property in your business, contact a member of our experienced commercial team to discuss the best way to protect your brand.

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Maung Aye
Maung is a partner in our Corporate and Commercial department. He joined Mackrell Turner Garrett following corporate law positions in London and in a leading regional firm in Essex. Maung read European Legal Studies at Lancaster University and the Università degli Studi di Trento and is a fluent Italian speaker.