The first thing that comes to our mind for a four finger chocolate is kit-kat by Nestle. On 16-12-2016, a 10 year fight over the four finger shape of kit-kat bar ended badly for Nestle, as an EU court ruled that the trademark, which was awarded in 2006 was given in error.

Its long running rival – Cadbury, which is now owned by the mega-company Mondelez International, had been arguing that the four finger bar is invalid  on the basis of article 7(1)(b), (c), (d), and (e)(ii) of regulation No 207/2009 in respect of all the goods covered by the trademark to the European Union Intellectual Property Office (EUIPO) in 2007.However EUIPO dismissed that application on the grounds that the Kit Kat shape had acquired “distinctive character” through its use.

Mondelez contended that Nestle hadn’t established that the bar shape was strongly associated enough with their brand by the public, arguing the EUIPO had only considered evidence of distinctiveness acquired through use in 10 member states.

Nestle had argued that even without its red and white packaging or the word KitKat embossed on the chocolate, the shape of the bar should be regarded as distinct.

The two issue here are, first, what can be considered as distinctive character through use and secondly, what happens when a category of goods also have sub-categories for a trademark to be registered.

In 2006, EUIPO registered the four finger shape kit kat bar under the following goods: “Sweets, bakery products, pastries, biscuits, cakes, waffles.” However the court observed that none of the evidence presented by Nestle addresses why its shape should be trademarked in the bakery products, pastries, cakes and waffle categories.

It’s been said that if a trade mark has been registered for a category of goods containing several sub-categories, proof that the mark has been put to genuine use in relation to a part of those goods affords protection only for the corresponding sub-category or sub-categories[1]

Hence, EUIPO erred in law in considering that the product in question could be included in any of the categories of goods concerned.[2]

EUIPO also considered nestle for its four finger shape kit kat bar having acquired distinctive character through use within the European Union. As nestle had shown that the mark had been used in almost all of the relevant territory of the European Union, covering 14 of the 15 members states in its composition at the time under consideration, identifying the mark that indicated the commercial origin of a product.

However the court held that if a mark like Nestlé’s 3D does not have inherent distinctive character throughout the European Union; the distinctive character acquired through use of the mark must be shown throughout the territory of the European Union, that is, in all the member states concerned. Hence, the case favored Cadbury. Now the Kit Kat copycats have the freedom to manufacture the shape as much as they want without any second thoughts, leading to no cretivity, boring!!

All these bring a powerful thought – “Are they vengeaning for what nestle did in the year 2004 or are they genuinely opposing for the common good” which will always be a mystery.

[1] Mondelez UK Holdings & Services Ltd v EUIPO — Société des produits, T-112/13

[2] Ibid

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