Register shape as trade mark, urges law firm, on back of Nestlé KitKat case

Four finger KitKat: design protection

Four finger KitKat: design protection

Food manufacturers are being urged to obtain trade mark registration for products with distinguishing features such as shape, by law firm DWF.

The advice follows Nestlé’s triumph in the latest stage of a series of legal spats with Cadbury. The confectionery brand has been allowed to stop rivals producing products in the shape of its famous four-finger KitKat after a European-wide ruling from the board of appeal at the Community Trade Mark Office (CTMO).  

Ed Meikle, intellectual property partner in DWF’s food sector group, said the ruling has looks at the implications of the case for other food manufacturers.

“Nestlé will be delighted with this ruling from the CTMO, having lost out to Cadbury before Christmas over the right to use the colour purple on its packaging.

“Design rights have a relatively short lifespan and Nestlé’s, which relate to its four-finger chocolate biscuit, expired long ago. However, with the recognition shapes can fulfil the function of a trade mark, canny businesses have been quick to re-protect their intellectual property rights, not least because unlike design rights, trade mark rights can last forever.

“Nestle’s three-dimensional trade mark registration for KitKat now sits alongside other well-known shapes such as Kraft’s Toblerone, which is registered for its unique triangular shape.  Similarly, Coca-Cola’s distinctive curved bottle, although no longer protected by design law, now enjoys indefinite trade mark protection so long as it remains in use.

“Although obtaining trade mark registration can be difficult, it is worth food manufacturers actively considering this sort of protection for products with distinguishing appearances.  Not only will they be able to stop their competitors from copying a design more easily, but such registered IP assets will add significant value to their businesses.”