Have a break, have a naked KitKat!

Nestlé, have not established acquired distinctiveness for their four finger bar of chocolate. On 17 May 2017, the Court of Appeal dismissed Nestlé’s appeal to register a four finger KitKat as a trade mark in the UK.

Nestlé’s application was opposed by Cadbury’s on the basis the mark lacked distinctive character, under s 3(1) (b) of the Trade Marks Act 1994. Nestlé had to establish acquired distinctiveness (secondary meaning) that a significant proportion of the relevant class of persons has come to rely upon the mark above to identify the goods as originating from a particular undertaking.

As reported by Scott in December 2016, regarding Nestlé’s application for the EU trade mark, if the mark is used as part of another registered trade mark or in conjunction with such a mark, the applicant must prove that the relevant class of persons perceive the goods as designating exclusively by the mark applied for, i.e. the mark above. The fact that the consumer recognises the product and associates it with KitKat is not sufficient.

KitKat market their product with the word, KitKat on their packaging and stamped on each finger. However, KitKat were not marketing their product as the ‘naked’ four fingers. The relevant class of persons view the product as below:

As stated in the Court of Appeal judgement, in light of the CJEU case:

“….it is not sufficient for an applicant for registration of an inherently non-distinctive mark to show that, as a result of the use which has been made of it, consumers merely recognise it and associate it with the applicant’s goods….”

Therefore, the naked four fingers do not indicate the origin of the product, which is an essential function of any trade mark. However, Nestlé may appeal!