Nestle Trademark Case Study

Trademark is a symbol, word, or design, which is used to recognize products or services of one vendor or producer and differentiate them from the other products (legislation.gov.uk, 2015).

Registering company’s trademark, the owner is able to:

· sue against everyone who attempts to use the brand without official authorization

· apply ® symbol next to his brand, basically to alert others against using it

· license and vend his brand.

Trademarks can be generally classified by types , such as word marks, colours, attach a reproduction, three-dimensional trademarks, sound trademarks, but we are going to analyze figurative marks (prv.se, 2015).

This request for a preliminary ruling concerns the interpretation of Article 3(1)(b)

In July 2010 one of the biggest confectionary giant Nestle submitted an application to register the four-finger Kit-Kat bar as a trademark in the High Court of Justice of England & Wales, Chancery Division, Intellectual Property (United Kingdom).

One of the main Nestle’s competitor in confectionary sector -Cadbury, fearing the Nestlé’s opportunity to create the monopoly on four-finger chocolate bars, stated the objection to the application.

At an early stage Nestle achieved the success in their lawsuit, however the Cadbury's claim exacerbated the situation to High Court and the Court of Justice of the European Union (CJEU) where the form was considered to further verification and finally dismissed as a trademark in September 2015.

3.2. What is the argument?

The central argument which Nestle provided in favour of its statement related to a research, which Nestle carried out, where the main question for respondents was to give the association for the image with four-finger chocolate and explain what they saw. More than 90% of interviewed people identified “Kit Kat” in the picture.

3.3. Why was Nestlé’s lawsuit

Despite the fact Nestle’s research demonstrated that shape of the chocolate bar was affiliated solely with products, there was no evidence that the only shape could discern Nestle products as TMA demanded. Moreover, still 10% of respondents involved did not associate four long wafer fingers covered in chocolate with “Kit Kat”. In addition, the CJEU was gravely concerned whether the shape by itself (without other trade marks e.g. the Kit Kat logotype) would be able to distinguish the products held by Nestle. Furthemore, this is the open question if consumers aknowledge a “Kit Kat” due to the shape of the chocolate or red and white package colour and italic font.

2) The shape was rejected as trademark in accordance the TMA.

It was a common knowledge that the shape of “Kit Kat “consisted of three main features: the rectangular shape, the carving separating the four fingers and the number of carvings. However, referring to the Section 3(2) of the TMA a trademark can not contain only of:

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

b) the shape of goods which is necessary to obtain a technical result” (wipo.int,