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Candy Bar Maker Loses Trademark Protection Based on Shape of Product

Trademark protection, while commonly associated with brand names, slogans, and logos, is available for almost anything visual or tangible that distinctly identifies a product or service. In some situations, this may include the shape of a product. The U.S. Patent and Trademark Office only has authority to register trademarks within the United States, so California businesses that operate abroad or in international commerce may need to seek additional protection. International registration is possible through a treaty framework known as the Madrid Protocol. The European Union (EU) also maintains a system for trademark registration for its member countries. The European Court of Justice (ECJ), the EU’s highest court, recently ruled on a trademark claim by Nestlé regarding the “four-finger” shape of its KitKat chocolate bar in Société des produits Nestlé SA v Mondelez UK Holdings & Services Ltd. A lower court had ruled that Nestlé’s trademark was invalid under EU law. The ECJ dismissed Nestlé’s appeal, affirming the lower court’s finding that the mark—i.e. the shape of the KitKat bar—did not meet the “distinctiveness” requirement. The legal basis for the ruling is similar to what might happen in a U.S. court. If you have questions about this often nuanced and complex area of law, get in touch with a California intellectual property attorney.

In order to obtain trademark protection through the USPTO, an applicant for registration must be able to demonstrate that they are using the mark in commerce, or that they have a “bona fide intention to use [it] in commerce.” 15 U.S.C. § 1127. The mark itself may consist of “any word, name, symbol, or device, or any combination thereof.” Id. Subject to certain restrictions, any mark that “has become distinctive of the applicant’s goods in commerce” may be eligible for registration. Id. at § 1052(f). The EU has similar requirements. The regulation in force at the time of the dispute in the Nestlé case specified that “trade marks which are devoid of any distinctive character” are ineligible for registration, unless a mark has become distinctive because of its use in connection with a particular good or service. European Council Regulation No. 207/2009 Arts. 7(1)(b), (3).

Nestlé first applied to the European Union Intellectual Property Office (EUIPO) to register the KitKat’s shape in March 2002. The EUIPO approved the application in July 2006. The following year, Cadbury, a competing candy bar maker, filed an application seeking to invalidate the trademark. The EUIPO granted the application and invalidated the trademark in 2011. An appellate board later reversed that decision, accepting Nestlé’s argument that the KitKat shape had acquired distinctiveness under Article 7(3) of Regulation 207/2009. Cadbury, through its parent company Mondelez, appealed this ruling to the European General Court (EGC).

The appeal to the EGC made a complex argument challenging the ruling that the KitKat had attained distinctiveness through usage in commerce. It held that the appellate board had erred when it found that the KitKat shape had attained distinctiveness throughout the EU to such an extent that it was not necessary to examine its distinctiveness in each member country. The EGC reversed the appellate board and invalidated the trademark again. Nestlé appealed this decision to the ECJ, which affirmed the EGC. The ECJ noted that the appellate board should have specifically considered the distinctiveness issue among consumers in Belgium, Ireland, Greece, and Portugal.

James G. Schwartz, a Bay Area intellectual property attorney, has represented businesses and business owners in litigation and transactional matters for more than forty years. Please contact us today online or at (925) 463-1073 to schedule a free and confidential consultation with a member of our team.

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