Trademarks issues for KitKat

What’s the difference between a Toblerone and a Kit-Kat? Aside from the obvious, it’s the fact that the shape of a Toblerone bar is a registered trade mark, and therefore no one can create a chocolate bar in the same shape, whereas Nestle has just lost in its attempt to register the shape of the four-fingered Kit-Kat bar as the High Court has just ruled against the registration.

Whilst the majority of people would recognise the shape of a Kit-Kat and immediately recall images of roller-skating pandas whilst a photographer decided to ‘take a break’, their registration failed, not least because ‘Kvikk Lunsj’, a similar shaped bar, has been available (albeit in limited quantities) in the UK since 1937. The judge also referred to the fact that the bars are sold in wrappers, so the shape of the bar is unlikely to cause confusion as to origin for a consumer who would presumably rely on the packaging to make their choice of confectionery.

Any trade mark (irrespective of whether it is 3-dimensional or not) must be sufficiently distinctive from other existing products and for 3-dimensional marks the shape must be part of the aesthetic design rather than a result of functionality (for which patent protection is the appropriate route).

The benefit of trade mark registration is that it allows the mark owner to take legal action against anyone who uses the mark without permission (whether deliberately or without knowledge of the earlier registered mark). Furthermore as the value of the brand grows, the trade mark registration itself will gain intrinsic value and will benefit the business on any sale or investment. Furthermore, a registration has a defensive element as it prevents the risk of a third party registering your brand for themselves and getting drawn into legal arguments as to whether your business can operate using the mark.

Napthens’ Intellectual Property team can offer a fixed price registration service for both UK and European Community Trade Mark applications.