In 2006, Nestle applied to register its KitKat chocolate bar as a three-dimensional shape mark. Fearful that this would allow Nestle to monopolise the marketplace for breakaway chocolate bars (by which I do not mean Nestle’s 1970’s Breakaway bar for those nostalgic readers), Cadbury raised various technical functionality objections which were heard by the Community Trade Mark Office (‘CTMO’) in January this year. The CMTO held that the four-finger shape is associated exclusively with Nestle in the mind of the average EU consumer, and awarded Nestle a Community Trade Mark in all 28 EU member states (including the UK).

However, in the latest round of this legal tussel, the UK’s Intellectual Property Office (‘IPO’) has upheld the objections of Mondelez-owned Cadbury finding that the mark consists of a functional shape and not an aesthetic design. The shape was also held to be devoid of distinctiveness, as it is commonly found for chocolate bars and biscuits.

The new ruling comes as a surprise to the Swiss confectionary giant, which has spent an estimated £15 million in KitKat marketing costs since 1996 and now finds itself in the unenviable situation where its KitKat shape both is, and isn’t, trade marked in the UK! Readers should watch this space for a potential appeal to the European Court of Justice, in which case it is hoped that the rulings will be harmonised.

Chocolate aside, this dispute serves as a warning to trade mark owners and prospective applicants that in order to satisfy the registrability criteria for trade mark protection in a shape, the shape must have at least one essential functional feature which is not attributable to a technical result!