On Wednesday 17 May 2017, the UK Court of Appeal ruled that Nestl could not trade mark the shape of its four-fingered KitKat wafer bar.
The decision is the latest in a series of long-running legal battles between confectionary rivals Nestl and Cadbury and represents a blow to the strength of Nestl’s IP portfolio. The decision also highlights the complexities of exactly what is capable of being registered as a trade mark and the various requirements associated with registration.
So, what exactly can be registered as a trade mark? As you can imagine, businesses and companies don’t often seek to register the shape of their product as a trade mark. Registration is more commonly sought for the company’s name or the name of its products (both “Cadbury” and “Dairy Milk” are registered trade marks).
Other common trade marks include logos, which can be registered themselves (like the Nike tick) or may be accompanied by some wording (for example the “KitKat” logo). Slogans are also commonly registered as trade marks but can be more difficult to register due to the basic registration criteria of “distinctiveness” (see below). Nestl originally failed to register the slogan “Have a Break” without the addition of “Have a KitKat” due to a lack of distinctiveness, but did subsequently go on to successfully register “Have a Break” as a trade mark in its own right.
Various other types of mark are also capable of registration despite being less conventional. Some of these less common marks are summarised below:
Type of Trade Mark
Shapes and 3D marks
Duracell’s black and copper square battery
is a registered trade mark.
Colour
Kraft Foods successfully registered the lilac/violet colour, used on the wrapper of its “Milka” chocolate bars, as a trade mark.
Sounds
MGM have successfully registered a lion’s roar as a trade mark.
Smells
Smells are, in theory, capable of trade mark registration but in practice struggle to meet the registration requirements (see below).
There are a number of “absolute” requirements which all marks, despite their form, must comply with to be registered; if these criteria are not met, the relevant intellectual property office will refuse registration outright. The two main, and most stringent, requirements are that the mark should be both “distinctive” and capable of “graphical representation”.
Marks that are “devoid of any distinctive character” are prohibited from registration. Distinctiveness is tested by reference to the NICE classes of goods and services against which registration is sought and the public perception of the mark. It was due to this requirement that the UK Court of Appeal ruled that shape of the four-fingered KitKat bar should not be registered as a trade mark; Nestl failed to establish that the shape was distinctive.
A mark must also be “capable of graphical representation”, meaning simply that the full extent of the mark must be clearly identifiable from its entry on the relevant intellectual property register. This requirement is easily met for a mark consisting solely of a word or logo but less common marks may fail to meet this requirement. Applicants have attempted previously to register smell marks by submitting an in-depth description of the smell, its chemical composition and a sample, but this wasn’t deemed sufficient to meet the graphical representation requirement.
Less common marks, including shapes and colours, are therefore in fact capable of trade mark registration despite the ruling given against Nestl’s four-fingered KitKat bar. That said, the requirements for registration are more easily satisfied in relation to more conventional marks such as words (including company and product names) and logos. Regardless of form, registration of a trade mark allows the owner to protect (by preventing unauthorised use) and exploit (by selling and licensing) their brand.
