The shape of the four-finger KitKat bar is set to lose its EU-wide protected trademark status after the European court of justice was instructed that the chocolate was not well enough known in Belgium, Ireland, Greece and Portugal.
An appeal by Nestlé, the maker of KitKat, against an earlier ruling should now be thrown out, the court’s advocate general advised judges sitting in the Luxembourg court.
The company had only provided evidence that the chocolate was sufficiently well known in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the UK, the advocate general, Melchior Wathelet, said.
For the trademark to be valid the KitKat would need to be recognised as distinctive across all the EU’s states, as had been ruled by the general court, the second highest in the EU, in 2016.
The Luxembourg-based court of justice of the European Union is the highest court in Europe. Panels of judges from member states sit to interpret whether EU law is being fairly applied and can issue binding rulings over national courts.
The ECJ has had a relatively benign history with the UK – unlike the more contentious European court of human rights in Strasbourg – but nonetheless became a symbol of compromised sovereignty during the Brexit referendum. The EU has insisted that any future agreements on citizens’ rights and access to the single market must continue to be policed by the ECJ.
The decision by the advocate general, whose advice is not binding but is generally followed, means the KitKat shape will now be open to imitation by competitors.
It follows a decision by appeal judges in the UK in favour of stripping KitKat of its UK-only trademark on the basis that the three-dimensional shape of a chocolate product had “no inherent distinctiveness”.
The appeal court heard then that that Nestlé had spent between £3m and £11m a year advertising and promoting KitKats between 1996 and 2007. More than 40m were sold in Britain in 2010.
The legal skirmish in the European court of justice is part of a wider battle between Nestlé and Mondelēz International, previously known as Cadbury Schweppes, which filed the original challenge to the EU trademark in 2007, a year after it had been granted. Nestlé, in turn, is challenging Mondelēz’s British trademark for the shade of purple wrapper on its Cadbury’s Daily Milk chocolate bars.
The EU intellectual property office was said to have erred in law when it granted trademark status to the four-finger shape in 2006. Nestlé has not sought such a status for its two-finger bar.
A spokesman for Nestlé said: “We believe his [Wathelet’s] final conclusion is based on incorrect factual findings. Nestlé did submit sufficient evidence to prove acquired distinctiveness of its iconic KitKat four fingers shape to meet the advocate general’s proposed threshold, including in the few countries where evidence was challenged.”
Gaining trademark status for shapes has proven to be particularly challenging for companies. In 2016 the Rubik’s Cube lost a decade-long battle to secure trademark protection for its own distinctive character.
However, Toblerone, which is owned by Mondelēz, has successfully trademarked its “zigzag prism” shape.