No Break In Fight Over Kit Kat Three-Dimensional Trademark

The story begins in the UK in 1935, when a worker at Rowntree’s York factory put an idea in the suggestion box for a snack that “a man could take to work in his pack.” This idea ‎led to the famous four-finger Kit Kat chocolate bar and, although Rowntree was acquired by Nestlé in 1988, the shape has remained almost entirely unchanged since 1935. Only its size has been altered slightly. It has been sold in the U.S. since 1970 by Hershey, pursuant to a license.

On July 8, 2010, Nestlé filed an application to register a UK trademark consisting of the shape of the Kit Kat product (except that it omits the embossed words “Kit Kat”) for chocolate, chocolate coated wafer biscuits and similar products. Cadbury filed an opposition and, on June 20, 2013, the examiner found that the trademark was devoid of inherent distinctive character, and that it had not acquired such a character. The application was refused.

Nestlé appealed to the High Court of Justice of England and Wales. The case turned on whether the shape fell within Article 3(1)(e) of Directive 2008/95, which prohibits registration of “signs which consist exclusively of:

  • the shape which results from the nature of the goods themselves;
  • the shape of goods which is necessary to obtain a technical result;
  • the shape which gives substantial value to the goods.”

The High Court stayed the proceedings and referred three questions to the European Court of Justice, which issued its ruling on September 16, 2015.

Question One: What If There Are Different Grounds For Refusal Of Different Features?

The examiner found that the Kit Kat shape has three features: (1) the basic rectangular slab; (2) the presence, position and depth of the grooves running along the length of the bar; and (3) the number of grooves which, together with the width of the bar, determine the number of “fingers”.

Although none of the Article 3(1)(e) grounds for refusal applied to all three features, each feature was barred by one of the three grounds. The examiner took the view that the first feature (a basic rectangular slab) is a shape which results from the nature of the goods themselves. As to the other two features (the grooves), the examiner found that these are necessary to obtain a technical result, specifically the ability to easily break the chocolate into portion size.

On appeal, Nestlé disagreed with this methodology, and argued that Article 3(1)(e) refusal was inappropriate unless one of the grounds for refusal applied to all three features. The question referred to the Court of Justice therefore was: what happens if certain features fall within one category (e.g., the shape results from the nature of the goods) and the others fall within another category (e.g., it is necessary to achieve a technical result)?

The Court answered that “at least one of the grounds for refusal of registration [must be] fully applicable to the shape at issue” (emphasis supplied). This means that if a ground is partially applicable because one feature only falls within that category, this is no obstacle to registration. In other words, by adding two shades of grey, you may get a darker grey but you will not get black.

Question Two: Does “Technical Result” Refer To Manufacturing Or Function?

A second question the English Court referred to the Court of Justice is based on Article 3(1)(e)(ii), which refuses registration of “the shape of goods which is necessary to obtain a technical result.” By “technical result,” does the article refer only to the manner in which the goods function, or does it also apply to the manner in which they are manufactured? The Advocate General assigned to the case had pointed out that in some instances, the technical result “may be obtainable only by means of a specific manufacturing process. Thus, in [this case], it is the presence of grooves which gives the product the shape which is necessary to obtain the desired result, that is to enable consumers easily to separate the wafer ‘fingers.’ The angle of the sides of the product and the angle of the grooves are determined by a specific chocolate molding process, that is to say, the method of manufacture of the product.” In his view, therefore, the manufacturing process dictated the shape of the goods, so that shape could be barred by registration under Article 3(1)(e)(ii). However, the Court disagreed and ruled that what matters is the manner in which the goods at issue function, because this is what is decisive from the consumer’s perspective.

Question Three: Can The “Kit Kat” Logo Help The Shape Acquire Distinctiveness?

The third question pertained to the examiner’s finding that the shape of the Kit Kat bar had not acquired distinctiveness, pursuant to Article 3.3. When Nestlé filed its three-dimensional trademark, it used a reproduction of an actual Kit Kat bar, but without the KIT KAT logo that is normally embossed in the chocolate. Survey evidence allowed Nestlé to prove that the general public associated the shape with Kit Kat, but most people sought to authenticate the product through the “Kit Kat” logo found on each finger.

The question, therefore, was whether acquired distinctiveness of the shape should be judged based only on the shape alone (in which case Kit Kat arguably did not have sufficient evidence), or whether it could be judged in the context of other marks that might also be present on the product. The Court answered that the trademark applicant must prove that the relevant class of persons perceives the goods as originating from a particular company based exclusively on the shape, not including any other mark which might also be present.

Nestlé therefore won on the first two points and lost on the third. However, the Court stressed that third question was only relevant if there is an obstacle to registration under Article 3(1)(e). This outcome will therefore benefit Nestlé’s efforts to save its UK trademark, but the battle will likely continue since similar issues have been and will be raised in relation to its Community Trademark, which was filed in 2002. The validity of that CTM was already confirmed by the OHIM Board of Appeals, but a further appeal is pending.