Nestle have lost the latest round of their long running battle with Cadbury (Société ses Produits Nestlé SA v Cadbury UK Ltd  EWHC 50 (Ch) concerning their attempt to register the four finger three dimensional shape of the KitKat biscuit as a trade mark. The attempt by Nestle to obtain a trade mark for this shape is a story we have been following for a long time. The case provides interesting guidance on the concept of a mark acquiring distinctiveness through use.
Trade mark application refused
In this case Nestle originally filed for a trade mark on the basis that they had been using the mark since 1935 and that a significant portion of the relevant public associated the shape with their product. The application was successfully opposed by Cadbury on the basis that in use the chocolate bar was embossed with the word 'KitKat' and Nestle had not proven that consumers relied upon the shape of the bar as evidence of trade origin, as opposed to the words embossed upon the bar. It was also held that the shape of the chocolate bar was necessary in order to be able to divide the chocolate bar into detachable fingers if the customer so desired. The application for the Trade Mark was therefore refused.
Nestle appealed this original decision to the High Court who referred points of law on to the Court of Justice of the European Union (CJEU). We covered the preliminary ruling from the CJEU here.
Following the preliminary ruling Mr Justice Arnold in the Chancery Division of the High Court has made a final ruling. The Court has dismissed Nestle's appeal in relation to non-registration of the mark in relation to chocolate biscuits, and also allowed Cadbury's appeal against the registration of the mark in relation to cakes and pastries.
This case is likely to go on and on. It will certainly proceed to the Court of Appeal and there is a very real possibility that it will go from there to the Supreme Court. There is also the very distinct possibility that either of these Courts may make a further reference back to the CJEU further prolonging this matter.
We shall keep you updated on the progress of this dispute and any implications it may have on the wider law surrounding registration of trade marks. If you have any queries or concerns about this case and how it may affect your business please do not hesitate to contact the team at McDaniel and Co on 0191 281 4000 or at email@example.com: News, Trade Marks