Kit Kat – The shape of things!

Image 2This development is so interesting that even though it happened around the fag end of 2012, we were convinced the Beacon had to turn its focus on it.

Nestle has won a trademark lawsuit against Cadbury over their IP rights on the chocolate bar’s four-fingered and three-dimensional shape. Now, as a bit of a reminder to the forgetful or the non-Indian Trademark law-aware reader, Section 2 (zb) of The Trade Marks Act, 1999 that defines a Trademark includes, “the shape of goods….” under its ambit, among other things.

Kit Kat’s shape was registered by Nestlé in 2006. Cadbury applied to invalidate the said registration shortly thereafter before the Cancellation Division of the OHIM (Office of Harmonization for the Internal Market, a body that registers EU Trademarks), claiming that a trait as general as a product’s shape could not be trademarked. Nestle, quite understandably appealed this decision before the Board of Appeal.

The Board of Appeal ruled in Nestle’s favour debarring other confectioners debarring other confectioners from selling products with a similar, four-bar structure, thereby raising quite a few eyebrows in the IP community who feel that Nestle was lucky to have bagged this one.

As per internationally recognized principles of Trademark law, a mark which is simple and constitutes a basic geometrical figure, is not capable of generating a brand recall with the result that consumers will not regard it as a trade mark (unless it has acquired distinctive character through prolonged use). Also, the trapezoidal shape of the Kit-Kat fingers is an extremely basic geometrical form, which as per many schools of thought is not a distinct/special/unique/path breaking feature in any way. Therefore, it has been felt that the Cancellation Division may have been correct in concluding that the sign lacked any distinctive character.

However, the Board of Appeal ruled that the trademark in the four-bar structure has been in use by Nestlé for so long that customers worldwide associate the shape with the brand and therefore it has acquired a distinctive character over the years.

This may not be the first Trademark dispute concerning the shape of a product but it throws up a set of very interesting arguments about the role of shapes as trademarks and how distinct the shape of a product must be, to be considered a variation from the expected, normal, customary shape in its category, to be therefore considered unique and trademark worthy.

(Image Source – http://www.cohesivethinking.com)

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