No break for Kit Kat: Nestlé chocolate bar loses trademark battle

26 Jul 2018 --- The European Court of Justice (ECJ) has dismissed an appeal by the confectionery giant, Nestlé, which argued that it owns the shape of the iconic chocolate bar: Kit Kat. Nestlé has spent more than a decade fighting to trademark the four-fingered wafer shape, but this week, the four-fingered chocolate bar lost its EU-wide protected trademark status, meaning that this could be the end to the snack’s protected status in Europe.

In 2002, the global chocolate giant applied for a trademark in Europe for Kit Kat. At the time, there was no issue with the bar itself, embossed with the Kit Kat logo. It also applied for the trademark for the shape of a Kit Kat or “four trapezoidal bars aligned on a rectangular base.”

Yesterdays’ ruling threw out Nestlé's appeal, telling the EU trademark office it has to “reconsider” its decision – essentially annulling Kit Kat's claim.

It also takes the pressure off identical treats like Norway's Kvikk Lunsj which has been around for 80 years. Norwegians, though, have national pride in the snack and its long-running image as an on-the-go meal for Scandinavians.

Its chocolate has a different flavor from the Kit Kat, similar to parent company Mondelez's Milka brand. The Norwegian bar has been made since 1937, two years after Kit Kat – initially called Rowntree's chocolate crisp – hit the market in 1935. The makers of Kvikk Lunsj, Mondelez, which owns brands including Cadbury, Milka, Oreo, and Toblerone and Cadbury took issue with Nestlé's new trademark.

After four years of back-and-forth, the EU trademark granted Nestlé the shape as a trademark.

In 2007, the court battle began in earnest, see-sawing from one side to the other during appeal after appeal.

In 2016, a lower EU court decided that Nestlé had to prove a Kit Kat was recognizable in every EU country and no evidence had been provided for Belgium, Ireland, Greece and Portugal.

Nestlé and the EU's trademark office appealed against the 2016 decision. If proof of distinctiveness had to be shown for every single member state, they argued, no company could ever reach that high standard.

Meanwhile, Mondelez argued that it was wrong to conclude that Kit Kat had “distinctive character” anywhere – including countries like the UK, Germany and France.

The European court threw out all those objections.

The result is that the EU's top court has now declared that it's not enough to prove that a product has become iconic in “a significant part” of the EU – it has to be determined across all the markets, not just some.

John Coldham, a partner at the UK law firm Gowling WLG, said that rather than canceling the trademark the court had decided that it should never have been awarded at all from the evidence, according to the BBC.

“Assuming the EU Intellectual Property Office does not have evidence that the shape is distinctive across the EU, I would expect it to remove the mark from the register now,” Coldham says.

“It is open to Nestlé to apply again and to put stronger evidence in, so this may well not be the end of the road,” he adds.

“No-one is saying it is impossible to get a trademark for the Kit Kat shape – just that there needs to be evidence that the shape is distinctive of Kit Kat in every part of the EU.”

Nestlé can still build a new case and keep fighting for the trademark, so this battle could still continue.

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