3D Trademarks & Registered Designs – KitKat Loses Legal Fight For Four-Finger Chocolate Bar

3D trademarks are notoriously difficult to register, as Nestlé found out last week just short of a few broken fingers. Earlier this summer we wrote about the Advocat-General’s (AG) opinion of the European court in our blog post 3D trademarks – No breaks for KitKat. It was reported that the AG’s opinion is normally followed by European judges and, unfortunately for Nestlé, the European court of justice has, according to the AG’s opinion, ruled that the four-finger chocolate bar lacks acquired distinctiveness for trademark registration.

Why Have 3D Trademark?

Trademarks are powerful intellectual property (IP) assets. They create scarcity where none exist, help drive away competition by protecting your trademark from same and similar marks and build brand associations which can be more valuable than the goods and services themselves.

3D trademarks can therefore be incredibly useful tools in your IP portfolio. This is because shapes can be more symbolic and also more powerful than words or logos. However, registering a 3D trademark has always been a tricky effort, especially for Nestlé whose KitKat shape was said not to comply with EU law. So why go to all that effort? For Nestlé, it may have simply been a question of one-upmanship in a tit for tat battle with Cadbury’s, one of its main competitors. Following a street survey which revealed that 90% of consumers recognized the chocolate bar (without its packaging) as a ‘KitKat’, you might understand why Nestlé went for the break.

Alternative Forms For Shape Protection?

One thing that should not be forgotten is that shapes can also be protected as a registered design which, in the UK, can last up to a maximum of 25 years. Protecting a shape as a registered design can therefore be seen as a viable alternative to a difficult to obtain 3D trademark. The two forms of protection are not mutually exclusive and there is nothing to prevent a trademark from also being a registered design. And, to this extent, the two IP regimes can offer complimentary forms of protection.

Why Apply For A Registered Design?

The main reason why you may decide to apply for design protection is that it is easier to obtain a registered design for a shape than it is obtaining a trademark. A trademark needs to be inherently distinctive, or have acquired distinctiveness through use, and must be capable of distinguishing the goods and services from one undertaking to those of another. A registered design on the other hand does not have such onerous requirements of distinctiveness, only that they are new (different from similar products on the market) and do not serve a technical function.

To give a modern example, take the iPod. It was reported in 2008 that the United States Patent and Trademark Office (USPTO) had granted Apple the 3D trademark for the infamous iPod music play. The Wall Street Journal noted that Apple’s campaign involved a substantial marketing campaign, product development and legal strategy to ensure that the product design was unique. The multi-layering of IP strategies helped Apple to dominate the market, reportedly amounting onto 70% of the market share in 2005. Such is the efficacy leveraging one IP asset against another.

Are you thinking about protecting the shape of one of your products? If you have a design which you think is particularly unique, Azrights can help you determine what the best strategy is for your product or design. Contact us for more information or alternatively visit our trademark registration and registered design pages.