Rowntree launched the KitKat in the 1930s and Switzerland-based Nestlé – which now owns Rowntree – registered the shape as a trademark in 2006.
Cadbury then successfully challenged the registration claiming a shape, unlike a name, was generic, but yesterday Nestlé secured a European-wide ruling from the board of appeal at the Community Trade Mark Office that reinstates the trademark.
Regulators ruled that by using the shape for so long, Nestlé had provided evidence that the shape was exclusively associated with it across the EU.
Appeal the decision
Cadbury is believed to be weighing-up its options before deciding whether to appeal the decision.
Simon Crossley, a partner at Eversheds and intellectual property (IP) expert, told FoodManufacture.co.uk that companies were increasingly willing to try and protect what they view as unique characteristics.
“In the supermarket and shop environment, anything that makes a product distinctive or unique is very valuable and, in an increasingly competitive environment, I think companies are increasingly willing to try and protect their products.”
He added that the focus on the shape of products, as opposed to names and slogans, was not a new development, but that it was increasingly coming into sharper focus, especially for food manufacturers.
“Companies do seem to be more willing to test the boundaries, but how the law responds to that is open to debate. I suspect a few companies will be getting in touch with their legal departments in light of this ruling, but they do need to have something quite distinctive to protect, such as the triangular Toblerone bar,” he added.
Legal wrangles
Nestlé’s trademark victory is the latest in a number of legal wrangles between the two firms.
In October Cadbury won a protracted court battle giving it the right to the trademark for the purple colour it uses on its packaging.
The UK-based chocolate company – acquired by the food business Kraft in 2010 and now operating under the Mondelēz banner – applied for the trademark in October 2004, registering its right to use the colour purple (Pantone 2685c). Nestlé challenged the move, arguing that colours could not be practically trademarked for commercial advantage.
However, the High Court in London ruled that: “purple is distinctive of Cadbury for milk chocolate”, because it had used the colour for its Dairy Milk bars since 1914.
The ruling meant that the particular shade of purple is now specific to milk chocolate bars and tablets, milk chocolate for eating and also drinking chocolate.