South Africa: Nestlé Loses Appeal To Trade Mark Four-Fingered Kitkat Shape

Nestlé, the Swiss confectionary company, may need to follow its KitKat slogan and take a break from its ten-year battle with Cadbury to get the particular shape of its four-fingered chocolate bar recognised as a trade mark in the United Kingdom.

The Court of Appeal ruled on Wednesday, 17 May 2017, that while KitKat's shape may be recognisable to consumers, the four-finger shape is "not inherently such that members of the public are likely to take it as a badge of origin in the way they would a newly coined word or a fancy name".

Although the KitKat shape has become well known, the court held that it does not automatically imply that consumers have come to perceive the shape of the Kit Kat as originating from Nestlé. Consumers may simply recall the familiar product and brand name or may recognise the shape as characteristic of products of that kind. For there to be acquired distinctiveness, the court held that consumers must perceive these goods as being Kit Kats or as originating from makers of KitKat, to the exclusion of all others. A perception that they looked like KitKat is not enough to amount to distinctiveness for trade mark purposes. Consumers must regard the shape alone as exclusively indicating origin. The four-fingered shape of the KitKat does not perform this function.

Despite the Court of Appeal's ruling, Nestlé could apply for leave to file an appeal to the Supreme Court, depending on the legal grounds available. A spokesman for Nestlé said that although disappointed with this judgment, it was "considering its next steps" as "KitKat is much loved around the world and its four finger-shape is well known by consumers".

Notwithstanding Nestlé obtaining trade mark registration in its four-finger shape in many other countries (including Germany, France, Australia, South Africa and Canada), this case clearly highlights the complications that often accompany attempts to obtain trade mark protection for the shape of a product, as companies will need to provide sufficient evidence that the shape of a product alone is enough to denote the origin of the product in the mind of the consumer.

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