Wednesday 20 January 2016 3:32 pm

KitKat’s four-finger shape cannot be a trademark says High Court in latest step in Nestle’s intellectual property battle

I'm a reporter at City A.M., mainly covering law, professional services and banking

I'm a reporter at City A.M., mainly covering law, professional services and banking

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Confectionery company Nestle suffered yet another knock today in its ongoing intellectual property battle against Cadbury after the High Court ruled that its four-finger KitKat design could not be registered as a trademark.

The High Court decision follows a ruling last September from the Court of Justice of the European Union.

The European court determined that, for the product shape to be eligible as a trademark, it must have a character that is distinctive to consumers so that they can identify the product based on shape alone, as this was the only aspect Nestle had applied for to be trademarked, and independent of any other markings.

This decision was then referred back to the English court to determine how the law should apply in the case of the KitKat.

Read more: ECJ gives KitKat four fingers

A spokesperson for Nestle UK confirmed that the company intended to appeal the decision and said: 

"KitKat is much loved and the iconic shape of the four-finger bar, which has been used in the UK for more than 80 years, is well known by consumers. We believe that the shape deserves to be protected as a trade mark in the UK and are disappointed that the court did not agree on this occasion."

Nestle first attempted to register the shape of the bar as a trademark in 2010, which Cadbury then contested.

"The question is whether a consumer would look at the four-finger chocolate bar and straight away know it was a KitKat, without the logo or wrapper," explained Sharon Daboul, trademark attorney at law firm EIP. "Consumers will tend to be influenced by a brand name and the outer packaging of a product rather than its shape alone, so the threshold for registering shapes as trademarks is high.

"However, while it is rare to win trademark protection for shapes, it is not impossible; the Toblerone shape and Nestle’s Walnut Whip are both protected."

Read more: The ECJ's advocate general is not giving KitKat a break

Meanwhile, David Woods, legal director at Pinsent Masons, commented:

"Cadbury will be pleased to have won the latest round in this on-going battle with Nestle. It’s possible that Cadbury have a similarly shaped product in the pipeline which they are planning to launch and this decision would help clear the way for that new product. It also clears the way for others in the confectionery market and Cadbury may well be just as happy to see Nestle have to deal with more competition."