Gimme a Break! Nestle Savors Trademark Victory in Shape of KIT KAT Bar.

The shape Nestlé’s iconic Kit Kar bar has been found to be distinctive, so says the appeal board at the Office for Harmonization in the Internal Market in the United Kingdom (“Office”). Denying Cadbury’s claim that the shape of the chocolate bar was not protectable on the grounds that it was too commonplace a shape, the Office opined that the “four bar” shape had been in such exclusive use for so many years in the UK, consumers had come to recognize it as being part of the Nestle family of marks.

Cadbury has, since 1935, sold the candy bar, Carmello, which also uses the 4-bar shape. Unfortunately, the English candy company does not sell the bar in the United Kingdom; only in other EU countries. Despite the fact that Cadbury provided evidence of its long-standing use of the “four-bar” shape outside the UK, such evidence did nothing to melt the Office’s chocolate heart. Cadbury is considering its options at this time, and may appeal that decision, which itself was an appeal from a lower decision finding Cadbury’s position that the “four-bar” shape was generic.

Practice Note: This case is important because it underscores two very important trademark principles. First, trademark rights are national in scope, and a company does not have a registration, it should have use. Although many courts will allow the introduction of evidence that a trademark is used in another country, it may not be determinative at the end of the day. The case also makes clear that trademark owners should consider all aspects of their product for trademark coverage. Companies often only look to the name and the packaging to determine whether trademark protection is warranted. The shape of the product may also provide some protection opportunities.

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