Experts have described the recent ruling by the Intellectual Property Office, in which it refused to allow Nestlé to trademark the four-finger shape of its KitKat bar, as “remarkable”.
The Swiss confectionary giant has been locked in an EU-wide legal tussle with fellow sweet-maker Cadbury since its original attempt to register the shape of the KitKat as a trademark in 2006, which was appealed by its UK rival.
What has shocked commentators is that the IPO’s decision goes against the latest EU ruling, in which the Community Trade Mark Office (CTMO) adjudged the four-finger shape to be exclusively associated with the brand, a decision which was upheld as recently as January, when the firm beat off an objection from Cadbury to maintain its EU-wide protection.
However, the IPO’s decision highlights a conundrum which could arise in any trade mark application, whereby what happens when the EU says yes, and the UK says no?
Because EU-wide protection includes the UK, trade mark owners will find themselves in a bizarre situation where their mark simultaneously is and is not trademarked in the UK, a situation Nestlé now finds itself in.
The ongoing battle shows the increasing lengths that businesses will now go to in order to protect themselves in an increasingly competitive market, where the stakes have never been higher.
Brands of the global magnitude of Nestlé and Cadbury’s will fight all the way to ensure that neither has any form of advantage the other cannot overrule for fear of losing precious market share.
Furthermore, it again emphasises the importance of registering a trademark at the earliest opportunity but also proves that a challenge to an application can be successful, even when taking on an iconic and globally-known brand like KitKat.