Sweet Victory – “Kit Kat” also Deserved a Break

Authors: Kristina Vilkiene, Assistant Attorney-at-Law in METIDA, Reda Zaboliene, Managing Partner, Attorney-at-Law, Patent Attorney in METIDA

sokoladas1The reason for juridical conflicts can sometimes become not only a verbal or a visual trademark which is a common marketing tool, but also the product’s form. Despite the fact that product’s form is usually concealed in its packaging, it can still become a distinguishing mark of a particular producer unless the rival company decides to prove otherwise.

Swiss company Société des Produits Nestlé S.A. back in 2002 filed 3 applications for three-dimensional (3D) Kit Kat trademarks to register the forms of chocolate bars:


The first chocolate bar’s form was registered as a trademark after the appeal procedure and it is still valid currently. There are on-going conflicts regarding the second chocolate bar’s form in the Office for Harmonization for the Internal Market (OHIM). Meanwhile, after long disputes between the applicant and the rival company Cadbury Holdings Ltd, the third four-finger chocolate bar form was acknowledged as the one which acquired a distinguishing character through the use.

The conflict between these two companies has arisen due to Cadbury Holdings Ltd declaration of invalidity against the trademark registration because it does not meet the absolute requirements for the trademarks, i.e. not having the distinctive character.

OHIM Cancellation Division after analysing Cadbury Holdings Ltd request regarding trademark registration’s cancellation has decided that three-dimensional chocolate bar form, which consists of four fingers linked into a rectangular shape and registered for goods (…) in class 30 of  Nice classification: ‘sweets, pastries, pastry dough, biscuits; pies, waffles’, does not have a distinctive character. It therefore could not be registered as  not corresponding Article 7 paragraph 1 point (b) of the Council Regulation on the Community trademark (207/2009).

Company Société des Produits Nestlé S.A. appealed against Cancellation Division decision to the Boards of Appeal at OHIM which had to answer the following three main questions while analysing this conflict:

– Is the three-dimensional mark considered as not having a distinctive character?

The Cancellation Division noted in its decision that the internal consumer usually does not make any assumptions about origin of the product based on the form of the product, and that in this case  it is more complicated to establish the presence of a distinctive character regarding the three-dimensional mark than for verbal or figurative trademark. However, main function of the trademark  is to distinguish the goods or services of one producer from goods and services of another producer. The Boards of Appeal upheld the decision of Cancellation Division regarding the refusal to register the three-dimensional mark as not having distinctive character and noted that only the fact that a particular producer used this new form in the market first does not automatically grant this form a  distinctive character. The Board noted that an average consumer does not analyse the market and cannot know in advance that only one company uses this form for its goods.

– Is there a sufficient number of consumers in the relevant part of the EU who consider this form as the indication of origin of the goods?

After the evaluation of presented evidences regarding the use of the registered mark, the Boards of Appeal has decided that the disputed mark was used almost in all territory of the EU  (in 14 out of 15 countries back in the time) and due to this usage almost 50% of users in the EU especially indicate the mark’s proprietor as a producer of the goods marked with this sign. In other words, the user firstly thinks about mark’s proprietor when seeing the product. Taking this into account, the Boards of Appeal stated that this three-dimensional mark acquired a distinguishing feature due to the usage.

– Is the form of the three-dimensional mark not only the technical characteristics of the product?

Despite the fact that it was acknowledged that the mark acquired a distinctive character, this exception cannot be applied when there are other grounds for refusing registering a trademark including those cases when the form that is applied for registration is only a form essential to achieve a technical result. According to the principle formulated in the case-law, any form the main features of which are only technical characteristics of the product or is meant only to achieve a technical result (even if that result can be achieved using other forms), cannot be registered as a trademark (judgement of 12 November, 2008 of EU General Court decision in Case T-270/06 (Lego brick)). With this judgement, the court confirmed that according to the system of intellectual property rights developed in the EU  protection of technical decisions is available only for a limited period of time (e.g. patenting them as inventions) so that subsequently they may be freely used by all market members. However, on the other hand, any shape of the goods has, to a certain extent,  functional purpose. Therefore, while determining the conformity of a form with the requirements provided by laws, it is crucial to determine whether this form is only a form essential for achieving technical result or whether it is made of technical characteristics of the product only.

The Boards of Appeal after evaluating the main features of the registered form made a decision that the linking of a four-finger chocolate bar, even if it was evaluated as facilitating its portioning, is not a technical solution or a function. Moreover, this particular linking may be used by other producers to link another chocolate bar fingers of a different form.

Summarizing, the conformity of the form of four-finger chocolate bar with the requirements provided for the trademarks, the Boards of Appeal noted that even though the main features of this mark (fingers’ form, their layout) are fairly common, the form acquired a distinctive character  through the use, therefore, it can be registered as a trademark.

The End

HAVE A BREAK (Reg. No. 002726925)

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