Give me a break…KitKat latest developments (Brands & IP Newsnotes - issue 5)

Since making its trade mark application in 2010, Nestle has sought to persuade the powers that be that the KitKat shape is distinctive and acts as a badge of origin. But “No!” said the Court. It could not conclude that a significant proportion of consumers, seeing the shape used in relation to chocolate bars, would perceive it as identifying KitKats or of goods originating from the people who make KitKats. There might be a perception that they looked like KitKats, but that was not enough.

The decision is yet another example of the difficulties that brand owners have in seeking to protect the shape of their products through registered trade marks.

Although applications to register shapes as trade marks are not supposed to be treated differently from any other type of application, the reality is that there is a higher burden for shapes. The Courts are reluctant to grant brands a monopoly, in the form of a registered trade mark, over shapes. And there remains scepticism about the extent to which the shape of a product alone (rather than shapes used in combination with words and logos) is capable of identifying a specific brand.

But some may be surprised by the decision – particularly consumers. They are often far more capable of identifying a product as coming from one source rather than another, based on the product’s shape, than the courts give them credit for.