Wayne Beynon, Intellectual Property lawyer at Cardiff and London based law firm, Capital Law, investigates the latest round in the Cadbury’s v KitKat trademark battle…

Earlier this month Nestlé lost a UK trademark ruling to protect the unique shape of its four finger KitKat chocolate bar, despite claiming victory in the EU earlier this year.

The ruling leaves Nestlé in the odd position of having a European trademark across all 28 member states (which includes the UK), but having been refused the same mark by the UK’s Intellectual Property Office (IPO). In reaching its decision, the UK IPO has effectively separated itself from EU law.

Previously the Community Trade Mark Office (CTMO), which decides trademarks throughout all 28 member states of the European Union, had ruled that the four-finger shape should be “exclusively associated” with Nestlé’s product.

Understandably Nestlé has said it is “perplexed” and “confused” following the IPO’s ruling. The Intellectual Property Office ruled against Nestlé on the grounds that consumers identified KitKats by their bright red packaging and not by the four chocolate fingers inside. Additionally, the IPO stated that the reason the chocolate bar was divided into fingers was a practical issue, rather than one of branding.

Furthermore, the IPO stated that as the four-finger shape was unidentifiable until the wrapper had been removed, any potential imitators would not confuse consumers.

However, a Nestlé spokeswoman countered: “The UK is the birthplace of KitKat and we are assessing whether to appeal. KitKat was launched more than 75 years ago and is one of the most iconic shapes of any chocolate bar, recognised around the world.”

The decision by the IPO is of course a worrying, and inevitably expensive, development for Nestlé who will no doubt be forced to appeal the decision.

The KitKat case is yet another example of the litigious and often complicated nature of intellectual property applications within the European confectionary industry. This past Spring Belgian chocolate makers met with regional governments in order to decide how Belgium might apply to the EU to get protected status for Belgian chocolates, and investigate the possibility of European Community trademark protection for complete brand protection.

And in March 2013 Lindt lost its twelve year gold bunny trademark case against Confiserie Riegelein, a German company who claimed that their gold foil chocolate bunnies had been a part of their collections for the past 50 years, and as a result had no intention of withdrawing them. Lindt, which has sold the gold bunny since 1952, had previously appealed four earlier decisions in Confiserie Riegelein’s favour, and, whilst they accept the current decision, will continue to defend the Lindt gold bunny through the intellectual property courts.

Combine these cases with several others including yet another battle between Nestlé and Cadbury over the exact purple Pantone shade of the Cadbury’s milk chocolate branding and it’s easy to see that the legal and intellectual property landscape of the European confectionary industry is far from straightforward.

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