In 2006 Nestle successfully registered the shape of a four bar of Kit Kat chocolate. However, Cadbury had applied to invalidate the trademark registration on the basis that the shape of a chocolate bar was a generic item that could not be protected by a single company.
Cadbury had initially won its appeal however, The Board Of Appeal at the EU’s Office for Harmonisation in the Internal Market has now overturned this decision in favour of Nestle. The latest decision is likely to have a major impact on the sale of confectionary items as companies will not be able to sell products with a similar four bar shape. Part of the reasoning for the decision was that the shape has been in use by Nestle for so long that the general public associate it with the brand.
According to Food Product Design, Cadbury hasn’t yet indicated whether it will appeal the ruling.
This is just another example of a trademark dispute between the two rival company’s who have been embroiled in such litigation for a number of years. Recently Cadbury won the right to exclusive use of a shade of purple for its packaging. Such cases are clear evidence that companies are not only seeking to protect their brand names but also the product shapes and colours.
However, in order to successfully register a shape or colour as a trademark an applicant must prove the distinctive characteristics relate to its own product. For company’s such as Nestle who have had their products in the market for a long time the ability to show that they have become distinctive allows them to obtain exclusive IP rights. In a competitive market, which has become tighter due to the current economic climate, this can provide an important strategic advantage against competitors.
Solicitors at Gepp & Sons can not only provide you with advice in relation to registering your IP rights but also discuss your ability to sell a licence of the same. Furthermore, if you believe that someone is infringing your IP rights, and your are considering taking action against them, we could provide you with advice and discuss the appropriate steps to be taken.
The above is not legal advice, it is intended to provide information of general interest in current legal issues.
