Nestlé v Cadbury: Kit Kat’s four finger shape fails as a trademark

What happened

Nestlé tried to register the three dimensional shape of its four finger Kit Kat bar, without the embossed logo, as a UK trademark for chocolate products. Cadbury opposed it, saying the shape didn't have a distinctive character of its own. The hearing officer who first looked at the case agreed with Cadbury. Even though Nestlé had sold huge volumes of Kit Kats, spent heavily on advertising, and produced a survey showing about half of people recognised the shape as a Kit Kat, the hearing officer found that people simply associated the shape with Kit Kat rather than using the shape alone to work out who made it. Nestlé appealed, first to the High Court and then to the Court of Appeal.

What did the court decide in Societe Des Produits Nestle v Cadbury UK?

The Court of Appeal dismissed Nestlé's appeal. It held that the hearing officer had applied the right legal test, one set out by the Court of Justice of the European Union after a question was referred in these proceedings. That test asks whether a significant proportion of consumers see goods marked only by the shape, with no other branding present, as coming from one particular business. The court found the hearing officer was entitled to conclude the evidence, including the survey, showed recognition and association with Kit Kat but not that people relied on the shape by itself to identify trade origin. This mattered because the product was always sold in opaque wrapping carrying the Kit Kat word and logo, so shoppers never actually bought it based on shape alone.

What we learned from this

• What I'd take from this is that strong sales and heavy advertising don't automatically earn you trademark rights over a product's shape. The test is narrower than most business owners expect.
• If you want to protect a shape as a trademark, think about showing that shape on its own in marketing, not just on packaging alongside your name and logo.
• A consumer survey showing people recognise your product isn't the same as proving they rely on the shape alone to identify who made it. These are different legal questions.
• Opaque packaging that always displays your brand name can work against a shape mark application, because it shows shoppers aren't actually seeing or relying on the shape when they buy.

Things to be aware of

The businesses involved

What happened next

• The same two companies were later involved in separate proceedings in 2022 over whether Cadbury could register shades of the colour purple as trademarks, a different dispute from the Kit Kat shape case.Source: Vennershipley, August 2022

What others said about it

• Gowling WLG noted the case is significant partly because it was the vehicle for a CJEU reference clarifying what's needed to prove a shape mark has acquired distinctiveness.Source: Gowlingwlg, January 2014
• CMS observed that the dispute illustrates how businesses sometimes turn to shape or colour trademarks to extend protection once other IP rights, like patents, have expired.Source: Cms, June 2015