Nestle’s long battle to have the shape of their Kit-Kat bars receive trademark protection in the European Union has once again hit an obstacle. Previously, the advocate general of the European court of justice provided an opinion opposed to giving the four finger shape of the bar trademark protection because it did not comply with EU law. Recently, the High Court of Justice of England and Wales agreed with the advocate general and denied Nestle the ability to trademark the shape of Kit-Kats.
Specifically, the court has said that the Kit-Kat bar has not acquired the requisite distinctiveness needed for trademark protection. Kit-Kat bars are mainly sold in opaque red packaging with the name “Kit-Kat” in large typeface placed in the center on the front of the packaging. When consumers purchase the chocolate bar they purchase chocolate that appears to be rectangular shaped. Only upon opening the packaging can the consumer see the four finger 3D shape of the bar, with the logo “Kit-Kat” on each individual finger. According to the court, therefore, the Kit-Kat logo and the bar’s packaging are really what consumers associate with the candy.  The bar’s shape is not distinctive enough under EU law—people would not see a plain four finger chocolate bar, sans logo, and automatically think of a Kit-Kat bar.
The court’s reasoning is questionable in this regard because there is no indication that consumers were surveyed on whether they associate the four finger rectangular shape with Kit-Kat bars or not. It is perhaps likely that people have come to associate the particular four finger bar with the Kit-Kat logo on each finger with the brand. Nestle’s Kit-Kat television commercials across the world (view here, here, and here) have emphasized the bar’s breakable shape to make the experience more enjoyable. The shape has been so highlighted that Kit-Kat also uses the slogan “have a break” to evoke the images of people breaking off one of the four fingers and then eating them. It seems that the court focused highly on the fact the logo “Kit-Kat” is placed on each individual finger, and if it was removed people would not be able to identify the source. However, it is hard to readily think of another chocolate bar that has the four finger design. The closest comparison seems to be a Twix bar, but that is only a two finger bar.
Given the court’s skepticism of Kit-Kat’s distinctive shape, it seems that Nestle will need to come up with stronger evidence that people can readily identify the four finger shape with Kit-Kat to help its case. However, given how far along this case has gone, perhaps Nestle’s window of opportunity to administer surveys and gather enough evidence has passed.
It is not unprecedented for Nestle or other companies to successfully receive trademark protection for the shape of their chocolate bars. Both Nestle’s Walnut Whip and Toblerone currently have trademark protection for their shapes. Toblerone’s pyramidal shape and Nestle’s Walnut Whip’s cone shape have been identified as aesthetic qualities of the chocolate bar, not serving a functional purpose. In contrast, Kit-Kat may have an uphill battle showing the four finger shape does not serve a function, namely making it easier to the break the chocolate up to consumer. It may be helpful that Kit-Kat has never explicitly marketed the bar’s shape as being functionally easier to consume, although the court could construe the slogan “have a break” as an allusion to the efficiency of the bar’s shape allowing for a quick snack break.
The functionality doctrine in trademark is not something the court touched upon, but can easily be utilized against Kit-Kat as a way to deny trademark protection. The functionality doctrine would effectively be an absolute bar to trademark protection for Nestle’s Kit Kat.
If the court decided to give Kit-Kat trademark protection for its shape, that would certainly disadvantage other chocolate makers seeking to utilize the same multiple-finger method to make eating chocolate a cleaner, easier process. So for now, rival chocolate makers should feel free to take advantage of the court’s decision and to utilize the four finger shape for new sweet treats.
Naadia Chowdhury is a J.D. candidate, 2017, at NYU School of Law.