This post looks at why shapes are not trade marks.

Like two heavyweight boxers, global chocolate manufacturers Cadbury and Nestle have gone through another round of trading blows against each other’s trade marks.

In the purple corner is Cadbury. Actually, it was Cadbury which lost out last time as they tried and failed to claim that the purple which is often used on their bar wrappers was a trade mark. The Court of Appeal disagreed.

The shape of a Kit Kat is not a trade mark

This time around and earlier this month, it was Nestle that was given the four-fingered count down in a knockout blow whereby the Court of Appeal judged that they couldn’t claim the shape of their KitKat bars as being registrable as a trade mark. The Court ruled that the four-finger design had “no inherent distinctiveness” and in any case the company had not marketed the shape of the bar for a considerable period of time.

Survey evidence

This was in spite of evidence produced by Nestle that the shape of KitKat had a very high recognition among consumers. The Court felt that this was not the result of any trade mark use, rather an association arising from widespread non-trade mark use of the shape. The bout may not yet be over as most industry commentators expect Nestle to appeal against the decision.

What does this mean for my business?

So what does this mean for other businesses in different market sectors and who are somewhat smaller than these two chocolatey behemoths? Firstly, of all the elements that could comprise a trade mark, shape is one of the hardest to register and protect against challenge.
Trade marks also comprise logos, strap lines, words and other visual ways of representing a brand. They are a key part of a company’s identity, a symbol of their relationship with customers and a key asset on their balance sheets.

Shapes are difficult to register as trade marks

Obtaining a trade mark for a shape, and one which quite frankly is in common use in many other spheres of life, requires a very high bar to leap over. Another chocolate brand, Toblerone, managed to jump high enough, in part because the shape of its bar where just so unique and not replicated anywhere else.
So, before even thinking about registering a shape, companies must ask themselves and/or their Trade Mark Attorney – does this pass the Toblerone test?

Is your business in for the long haul?

Secondly, the Nestle/Cadbury duel should act as a warning: attempting to register and/or protect a trade mark with such a high level of proof being required can result in judgements that are nuanced and loaded full of technicalities. Without a clear and unambiguous ruling the chances are that further action will take place pushing up costs and sometimes pushing down the reputations of those involved.
Again, companies need to ask themselves do they have the resources and can they absorb the risks of prolonged actions of this sort. If not, it would be better if they desisted.

Ward Trade Marks conducts trade mark opposition proceedings before the UKIPO and the EUIPO. If you need help on opposing a trade mark application, or defending an opposition to your trade mark application: