The European Court of Justice has thrown out an appeal by the chocolate bar’s maker, Nestlé, which argued that it owns the shape of the teatime treat.
Nestlé has spent more than a decade fighting to trademark the four-fingered wafer shape – something that rival Cadbury had fought hard against.
The registration of the four fingered Kit Kat shape as a trade mark has been the subject of a long running dispute between Nestlé and Cadbury. The key issue being argued between the parties was whether the shape, though not initially inherently distinctive, had acquired distinctiveness through its predominant use by Kit Kat.
The Court ruled that, as this was a EU registration, Kit Kat would have to provide evidence to show that the use of the shape by Kit Kat had led to the trade mark acquiring distinctiveness in each country within the EU before the trade mark could held to be valid. In the majority of cases, this will be a substantial hurdle for the registrant to overcome.
It remains possible to register shape marks, either because they are inherently distinctive or because of their long use they have become distinctive of the product. That shape can relate to the product or more likely its packaging (think of the classic Coca Cola bottle or a Toblerone bar). However, where the owner is relying on acquired distinctiveness, it may be better to seek protection separately in each relevant national registry, to prevent registrations being challenged on the basis that it remains non-distinctive in only a few European countries.