Nestlé and Cadbury are involved in battles on many fronts and it is unclear who will ultimately win the war and what will be gained. In the latest battle over the four-fingered Kit Kat shape mark* however, it is Nestlé that have been victorious.
Nestlé applied to protect the shape of their four-fingered Kit Kat bar as a Community Trade Mark (CTM), as shown below:
Cadbury filed a request for a declaration of invalidity on several bases, the main one being that the mark was non-distinctive for the goods for which it was registered and/or that the mark consisted exclusively of signs or indications which may serve in trade to designate characteristics of the goods.
Nestlé responded arguing that the mark was inherently distinctive and that, in the alternative, the use that they had made of the mark meant that it has acquired distinctive character. An otherwise non-distinctive mark can be registerable if, by virtue made of a mark either before or after it is registered, it acquires sufficient distinctiveness as to act as a badge of origin.
The Cancellation Division of the OHIM examined the evidence submitted and decided that insufficient evidence had been produced to show a reputation and thus the invalidity action was successful.
Nestlé appealed the decision to the Boards of Appeal. The Second Board of Appeal concluded that the Division had misapplied the law and misinterpreted the evidence. They stated that the three dimensional mark was not inherently distinctive and therefore should probably not have been accepted for registration. However, the evidence of acquired distinctiveness must be judged from the viewpoint of consumers across the EU, and not the sum of the different separate national markets constituting it. On this basis, the figures showed that almost 50% of the general public of the entire EU identified Nestlé as the business origin of products with the shape of the contested mark. Consequently the appeal was upheld and the invalidity action dismissed.
*Decision of 11 December 2012 R513/2011-2 Shape of a Four-Fingered Chocolate Bar (3D Mark)