Nestlé v Mondelez: Why the KitKat Four-Finger Shape Failed as an EU Trademark

By Imaduddin

Photo: Counselling / Pixabay

A chocolate bar made of four fingers, each with a groove along its length, is instantly familiar to many shoppers. Nestlé, which owns KitKat, spent well over a decade trying to make that shape an EU trademark. Its rival Mondelez, the owner of Cadbury, spent just as long trying to stop it. The fight ended with a 2018 ruling of the Court of Justice of the European Union that every brand owner seeking a shape mark should know.

A long procedural history

According to the Court of Justice's judgment, Nestlé applied to the EU trademark office on 21 March 2002 to register a three-dimensional sign showing the four-finger bar, without any word or logo. The mark was registered on 28 July 2006 for goods including sweets, biscuits and cakes. On 23 March 2007 Cadbury Schweppes, whose rights later passed to Mondelez, asked for the registration to be declared invalid.

The EUIPO's Second Board of Appeal upheld the mark in a decision of 11 December 2012. It accepted that the shape had no inherent distinctiveness, but found it had become distinctive through use. On 15 December 2016, in Case T-112/13, the General Court annulled that decision.

The Court of Justice ruling

On 25 July 2018, in Joined Cases C-84/17 P, C-85/17 P and C-95/17 P, the Court of Justice dismissed the appeals brought by Nestlé and the EUIPO. The court held that where a mark has no inherent distinctive character across the EU, the owner must prove it has acquired distinctiveness through use throughout the EU, not just in a substantial part of it. Evidence can be grouped by region, but no Member State can be left out.

The court agreed with the General Court that the Board of Appeal had not dealt with whether the shape had become distinctive in Belgium, Ireland, Greece and Portugal. Its decision was therefore unlawful, and the case returned to the EUIPO.

A parallel defeat in the UK

The shape had a similar fate in Britain. In 2017 the Court of Appeal of England and Wales upheld the refusal of Nestlé's UK application for the four-finger shape, finding that Nestlé had not shown that consumers relied on the shape itself, rather than the KitKat name and packaging, to identify the product.

The Indonesian angle

Article 1(1) of Law No. 20 of 2016 on Marks and Geographical Indications allows marks in three-dimensional form, but shapes that consumers see as an ordinary product form struggle to show distinctiveness. Indonesia has a single national register, so the EU's "every Member State" problem does not arise, but applicants should still be ready to prove that the public sees the shape as a brand. Registering the product's appearance as an industrial design can be a useful alternative or complement.

Sources

• Court of Justice of the European Union, judgment of 25 July 2018, Société des produits Nestlé v Mondelez UK Holdings & Services, Joined Cases C-84/17 P, C-85/17 P and C-95/17 P (EUR-Lex)
• Court of Appeal of England and Wales, Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358 (BAILII)
• JDIH BPK, Law No. 20 of 2016 on Marks and Geographical Indications (statute text and status, in Indonesian)