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Kitkat's four fingers Trademark Denied

Kitkat's four fingers Trademark Denied

It’s not every day that you see two of the world’s largest food and confectionery brands fighting over a wafer chocolate. This 7-year long court battle came to an end in May 2017 when an EU Court ruled against Nestlé’s claim to trademark the shape of its popular wafer chocolate ‘KitKat’.

The case was filed as an objection by Cadbury against Nestlé’s claim over the shape of the 4-finger rectangular chocolate bar. It was argued by Cadbury that the claim was unlawful as it fell under Article 3 of the EU Directive 2008/95. A replica of the same clause is also present under Section 9 of the Indian Trademarks Act, 1999-

Absolute grounds for refusal of registration.—

(1) The trade marks—

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;…..

(3) A mark shall not be registered as a trade mark if it consists exclusively of—

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods.

On the basis of the above-mentioned grounds, the court established two essentials which were necessary to be fulfilled for any shape mark to be registered as a trademark:

a.      Distinctiveness of the trademark

The distinctiveness of a product also referred to as acquired distinctiveness can be defined as the key characteristic that allows customers to differentiate one product from the rest.

An important factor is determining whether the ‘Kit Kat’ shape could be considered as a trademark was to prove that the 4-fingered rectangular bar was a distinct shape that had acquired exclusive recognition as a chocolate bar over a period of time.

 However, the court stated that a mere association of the shape to the undertaking was not sufficient to prove its distinctiveness. The shape had to establish itself as the sole identity of the undertaking, i.e, the identification of the chocolate bar had to be based exclusively on that mark and only then it could fulfill the essentials of a trademark. It was held that the company failed to establish this sole association between the mark and its consumers.

 b.      Shape of the trademark

The second important aspect that the court delved into was the determination of the essential elements of the rectangular chocolate bar. The court sub-divided them into three essentials: the rectangular slabs, the breaking grooves and the grooves forming the “fingers” of the chocolate bar. It further stated that a shape could not be registered as a trademark if any of these essentials fell in the prohibitions with respect to a shape mark mentioned under Article 3(1) (e) of The Directive 2008/5; corresponding this Article is Section 9 (3) of the Indian Trademarks Act, 1999 [reproduced above].

 While the court failed to indicate a clear reason which proved the shape’s prohibition under the Directive, it substantiated its refusal for granting the trademark by rejecting the argument of ‘public opinion’ established by Nestlé.

 The undertaking had conducted a survey, the results of which stated that 90% of the people associated an unbranded-four fingered chocolate with Kit Kat. The court rejecting the argument held that public opinion was not a factor that could form the basis of establishing a shape as a trademark. It further stated that customers lacked the necessary technical knowledge and expert opinion to assess the elements of the shape mark which had to be registered.

 Even though the judgment has evident lacunae and lacks reasoning under various articles of the EU Directive, it is an important take at understanding the complexities of the laws pertaining to shape trademarks, an Intellectual Property concept which continues to remain vague and difficult to interpret around the globe. The judgment shall also act as an aid for a number of trademark cases in India because of the legal similarities shared by the two judicial systems with respect to IPR.

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