Nestlé has failed in its latest attempt to trademark the four-finger shape of the KitKat chocolate bar to prevent rivals producing a similar shaped product.

The Swiss firm has fought a long running battle with Cadbury dating back to 2010 to register the three-dimensional shape of its KitKat bar with trademark protection. However, the High Court yesterday agreed with Cadbury that the shape was not distinctive enough for consumers to identify all such bars as KitKats. Mr Justice Arnold noted that Nestlé had not promoted the bar’s shape as one of its selling points, saying the product had been sold in an opaque wrapper that did not reveal its shape. 

Nestlé said that it will appeal the decision with a company statement saying: "KitKat is much loved and the iconic shape of the four-finger bar, which has been used in the UK for more than 80 years, is well known by consumers. 

"We believe that the shape deserves to be protected as a trade mark in the UK and are disappointed that the court did not agree on this occasion." 

Last September the company failed to persuade European judges of its arguments with the ECJ saying that the company had to demonstrate the public relied on the shape alone to identify the snack. 

Commenting on yesterday’s ruling, Sharon Daboul, trademark attorney at EIP, said: “The question is whether a consumer would look at the four-finger chocolate bar and straight away know it was a KitKat, without the logo or wrapper. Consumers will tend to be influenced by a brand name and the outer packaging of a product rather than its shape alone, so the threshold for registering shapes as trademarks is high. However, whilst is it rare to win trademark protection for shapes, it is not impossible; the Toblerone shape and Nestlé’s Walnut Whip are both protected. 

“The hurdle is arguably higher for bigger brand owners like Nestlé and Cadbury, whose brand names and packaging are far more famous than the shapes of their products. Whilst the name KitKat is far more distinctive than the shape of the chocolate bar that Nestlé tried to register, Nestlé had to prove that it was the unbranded shape alone that consumers relied upon to know the product. Proving that consumers associated the shape with a KitKat bar was not enough; consumers had to rely on the shape as an indication of origin and the onus was on Nestlé to have shown this in the earlier evidence rounds. 

“This seems to be a common-sense decision and perhaps public policy also played a part. Allowing registration of the KitKat shape would have given Nestlé a valuable monopoly and competitive advantage over other confectionary manufacturers, which is one of the reasons why Cadbury has been keen to stop them. It follows an earlier dispute between the manufacturers over registering the colour purple as a trademark; Cadbury lost that battle in 2013. However, this may not be the end this long running, tit-for-tat dispute with Cadbury, as Nestlé has already said that it will appeal this decision”

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