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KitKats Aren’t Distinctive Enough to be Trademarked

If I was to describe a chocolate bar made of two or four joined rectangular fingers, which chocolate bar would come to mind?

Chocolate Splash
Hopefully, for the sake of this blog, you thought of a KitKat, but you could be wrong. A judge has ruled that the four finger rectangle design of the KitKat isn’t distinctive enough to be trademarked.

Mr Justice Arnold ruled in favour of rival chocolate company Cadbury after they complained about Nestlé trying to protect their creation. He said that the shape of the bar was not different enough from other bars available. There are other four fingered bars on the market, including one that was launched in Norway in 1937. It’s identical to the KitKat in shape, but doesn’t have the KitKat markings.

Nestle have said that they will appeal the ruling, but it’s not the first time an apparently unique design has been turned down for trademark protection.

The distinctive shape of the black cab is one we can all bring to mind, but this shape is not a protected trademark. The London Taxi Company, who makes the traditional hackney carriage, took action against the makers of Metrocab, a new hybrid-powered taxi that looks markedly similar to the traditional black cab. The London Taxi Company took Metrocab to court accusing them of copying the original. However, the judge dismissed the case, allowing Metrocab to continue to make their version of the taxi.

Another company that lost their case to protect their shape was Lindt. They went to court in 2012 to protect their gold bunny design, but the European Court ruled that “the combination of the shape, the colours and the pleated ribbon with a small bell are not sufficiently different” from any other chocolate rabbit out there. But I bet if someone was to ask you to name the maker of the gold bunny with the red ribbon and little bell, you’d probably say Lindt.

Trademarking a design has huge benefits to a company but to trademark a shape requires a lot of thought. The law requires that the shape is sufficiently distinctive, to immediately distinguish between different products for example. Consumers have to be able to recognise the product from the shape itself and associate it with a particular brand, even without any packaging, logos or brand names on it.

For example, a kettle is a kettle. But you wouldn’t necessarily know which brand made which kettle just by looking at the shape of it. A kettle is usually a roundish shape, with a lip to pour water out of, and a handle. But if you were shown an unwrapped and unbranded Toblerone for example, the shape would immediately tell you what it was.

If you have come up with a new and unique design for branding or a particular product it’s always a good idea to consider applying for a trademark to make sure it’s not copied by any potential rivals. You can find out more about the trademarking process via the Intellectual Property Office website.

Also, it’s really important to make sure that your design isn’t like anything else out there, especially if you think it looks a bit like a larger company’s product or branding. Large companies will not hesitate in challenging designs that are identical, similar or too close for comfort and have ample resources to protect their ‘look’ so do your research. But of course, in the case of the humble KitKat the challenge has not yet been a successful one.

If you need advice on trademarks or any other intellectual property, the intellectual property solicitors at Slater and Gordon can help you.

Call us on 0800 916 9052 or contact us online and we will call you.

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