Can you trademark the shape of a candy bar?

Alyssa Hertel | 4/3/16

According to the high court in the UK you can’t trademark the shape of a candy bar. Earlier this year, the high court ruled that Nestle, maker of the beloved Kit Kat bar, could not trademark the shape of the four-fingered chocolate bar that the world has come to know and love.

The case first starts back in 2010 when Nestle first tried to trademark the shape of the four-fingered chocolate bar. Cadbury, however, opposed the trademark application. Cadbury and Nestle have been in a battle of trademarks involving their respective candy bars. Nestle had opposed Cadbury’s trademark registration for the color purple with Cadbury’s Dairy Milk chocolate bar.

In 2013, an appeal court in London ruled that Cadbury failed to comply with the requirements for registration because the trademark lacked the “required clarity, precision, self-containment, durability and objectivity to qualify for registration.”

The court was worried that allowing Cadbury the monopoly on the color purple would give Cadbury an unfair competitive advantage over other chocolate manufactures. The court did not buy into Cadbury’s arguments that not allowing Cadbury to have the monopoly would allow other chocolate manufactures to make inferior copycats of the Dairy Milk bar. The monopoly should be allowed because there are numerous shades of purple still available for other chocolate manufactures to use. The court reasoned that the public needs clarity over the rights given and therefore to succeed in protecting a color as trademark, companies will need to think and comply with the registration requirements.

Now, the high court has ruled in favor of Cadbury but on a different issue. The issue this time involves Nestle’s Kit Kat bar; more specifically the iconic shape of the Kit Kat bar, which is a four-fingered chocolate bar. While other candy manufactures have seemed to successfully receive a trademark on the shape of their candy bar that is not the case with Nestle Kit Kat bar.

In fact, Nestle has successfully won trademark protection for the shape of it’s Walnut Whip chocolate cone. Toblerone has also won trademark protection for the shape its chocolate bar. While it is not impossible to win trademark protection of the shape of a candy bar, the high court ruled that Nestles Kit Kat bar didn’t meet the cut.

The High Court ruled that the shape of Nestle’s Kit Kat bar had not fully “acquired a distinctive character” to satisfy the requirements for trademark and warrant trademark protection. This is despite Nestlé’s argument that the four-finger chocolate bar is well known and loved by Nestle’s consumers and the iconic shape has been used and sold for over 80 years.

Further, the court noted that consumers were not likely to confuse the Kit Kat bar with any other chocolate manufacture’s imposter chocolate bars that are similarly shaped because Kit Kats distinctive packaging is what consumers look and rely on. Consumers would rely on the work trademark “Kit Kat” and any other trademarks located on the packaging of the Kit Kat bar rather than the shape of the bar itself.

The shape of the Kit Kat bar is merely associated with the Kit Kat bar and therefore the Nestle brand but that is it. The iconic four-fingered chocolate bar shape is not a source identifier just something consumers associated with it.

The High Court hinted that if Nestle had promoted the four-fingered chocolate bar’s shape as one of its selling points, then it might have been possible for Nestle to have received the protection of a trademark for the shape of the bar. Even going as far as to say that if the Kit Kat bar had been distributed in a wrapping that was not opaque and revealed the iconic four-fingered shape of the chocolate bar then it might have been more of a showing that the four-fingered shape of the Kit Kat bar was used as a source identifier.

The court made it clear that in order for a shape to be granted the protection of trademark law, there has to be a showing that the consumers have now come to rely on the shape itself in order to distinguish the good from others goods at issue.

However, this is not going to stop Nestle from pursing the matter of the shape of its Kit Kat bar as being a valid trademark. Nestle still strongly believes that the iconic four-fingered shape of its chocolate bar deserves the protection of trademark law and will take the required steps to appeal the judgment by the High Court.

Nestle can try and appeal this decision, however, it seems the High Court got this one right. Trademarks are source identifies and while the four-fingered chocolate bar is well known to be associated with Kit Kat, that is not the question. The question is whether a consumer looking at the shape by itself would right away know it was a Kit Kat, without any logos or any other trademarks used with the Kit Kat bar.

While some would probably think it’s a Kit Kat bar by just looking at its shape, most of consumers would be confused and ask whether or not it actually is a Kit Kat bar. Without the Kit Kat trademark or that famous packaging, a consumer would not for sure know the source of the chocolate bar just by looking at its shape. Nestle, give the courts a break and break them off a piece o’ that Kit Kat bar.