Nestlé’s attempt to trade mark the shape of the KitKat has been thwarted by arch nemesis Cadbury who, with a home court advantage, successfully challenged the registration in the UK last month.
This is sweet revenge for Cadbury after Nestlé successfully challenged Cadbury’s registration of the colour purple in the UK a while back (Cadbury at least got a shade of purple in Australia). But to understand their trade mark feud you need to go back to the 90s (cue flashback to hypercolour t-shirts, yo-yo diablos and Y2K bug hysteria). In 1995, new legislation in Australia expanded the definition of registrable trade marks to include scents, sounds and shapes.
So why are shape marks such a big deal? Well, before the change if you had a shape to protect you had two options; copyright or design registration. The upside of copyright is that the shape can be protected for much longer. The downside is that once you mass produce the shape, you lose copyright protection and the ability to register the design. So what’s wrong with designs? The shape has to be new and registration only lasts 10 years. However, a trade mark can protect a shape forever as long as you have the cash to renew it, you continue to use it and nobody successfully challenges it.
Most fail because the shape is incapable of distinguishing the applicant’s goods from others. In the late 90s, Nestlé tried to register the shape of Lifesavers but failed after Cadbury opposed it. A circle with a hole in it doesn’t scream Lifesaver unless the words are on there. Around the same time, bug shaped candy (to coincide with Y2K, duh!) was distinctive enough to get a shape mark. Many chocolatiers have had a crack. Toblerone was successful, whilst Guylian’s seashells failed. Nestlé’s KitKat originally failed after Aldi and Cadbury successfully opposed it. While use can overcome a mark that is not that distinctive, it was determined that Nestlé didn't use the shape enough as a mark. Strangely, on appeal the parties agreed that the application should be allowed and the KitKat shape has been registered in Australia ever since. In the UK, the feud won’t take a break just yet given Nestlé intends to appeal, so watch this space.