Cadbury is fighting attempts by rival confectioner, Nestle, to trademark the shape of its popular chocolate snack, Kit Kat.
According to SmartCompany, the UK 3D trademark registration for the shape of the Kit Kat was accepted by the UK trademark registery on the basis that the chocolate’s shape mark is distinctive.
The case has now been referred to the European Union Court of Justice for guidance on EU law.
In Europe, this sort of trademarking comes down to whether consumers recognise the shape and colour of a product as indicating that a trademark owner is the source of the goods, and Bill Ladas, special counsel at King & Wood Mallesons, told SmartCompany a key issue in the Kit Kat case is what standard of proof is needed.
“This is usually obvious for words, but it must be the case with modern advertising practices that consumers have come immediately to recognise some shapes as branding, or that they will at least come to this recognition through promotion of that brand over the course of time,” he said.
In September last year Cadbury lost its attempt to stop Whittaker’s from trademarking the name of a chocolate block.
Cadbury was trying to stop Whittaker's from trademarking the term 'Berry Forest', arguing it too closely resembles Cadbury's 'Black Forest' chocolate flavour and would confuse customers.
And just last week, entrepreneur and advocate for Australia’s food manufacturing industry, Dick Smith, lost the name rights to his OzEmite spread, with Intellectual Property Australia ruling the product is to be pulled from retailers’ shelves.
IP Australia ruled OzEmite sounds too similar to another yeast spread, AussieMite – the founder of which, Rodger Ramsay, commenced legal proceedings in 2011.