For many years, Nestlé has been seeking registration of its KIT-KAT shape as a trade mark in various parts of the world with various degrees of success.

Shape trade mark registrations are a powerful weapon as they are infinitely renewable and can therefore provide a perpetual monopoly. Other intellectual property rights in shapes (including designs, copyright, and sometimes patents) have limited duration.

The latest battle in the KIT-KAT war was based on Nestlé’s application to register the shape as a trade mark in the UK in 2010. The application was ultimately accepted and subsequently opposed by Nestlé’s competitor, Cadbury. Cadbury was successful in its opposition before the UKIPO, on the basis that the shape of the KIT-KAT was functional (being dictated by the requirement for the bar to break evenly) and not distinctive, and Nestlé’s evidence only showed consumers associated the bar shape with it, not that the bar shape operated to distinguish the source of its goods. Nestlé appealed to the UK High Court which referred a number of questions to the European Court of Justice, including whether a trade mark applicant needed to demonstrate that an otherwise non-distinctive shape mark was relied upon to distinguish the origin of the product or whether mere association of the shape with a particular source was sufficient to show acquired distinctiveness. The Advocate-General, who provides preliminary advices to the European Court of Justice, recently issued an opinion indicating that acquired distinctiveness required much more than ‘mere recognition’ of the shape. The Advocate-General’s decision is not binding on the European Court of Justice but is generally followed.

Interestingly, the KIT-KAT dispute is being dealt with in Europe long after it was settled in Australia in 2010. Nestle’s opponent in the Australian battle was supermarket chain Aldi, which is known for its copycat products. Aldi successfully opposed the registration of the KIT-KAT shape as a trade mark before IP Australia and was also successful on Nestlé’s appeal to the Federal Court. However, the parties settled the matter after the Federal Court decision issued and as a result of a technicality, Nestlé now enjoys a trade mark registration in Australia for the KIT-KAT shape despite the successful opposition.

Preliminary signs are that it may not be so lucky in the UK.