What is a distinctive shape?

For some years now it has been possible to apply for registration of 3D shapes as trademarks. The court battle between Nestlé and Cadbury over whether the 4-fingered KitKat bar could be registered as a 3D trademark illustrates some of the difficulties. 

The 5 key points:

1.    Nestlé applied to register their 4-fingered chocolate bar as a 3D trademark. Cadbury objected claiming that it lacked essential distinctive character.

2.    The case progressed to the Courts with judgment in favour of Cadbury. Nestle appealed.

3.   The Court of Appeal in England held that the shape lacked distinctiveness which would allow a third party to rely on it as an indicator of origin – i.e. that it would clearly be seen as having emanated from Nestle. In other words, it was not a “badge of origin”.

4.   While there have been successful applications for registration e.g. the Coca-Cola bottle shape, the courts have been reluctant to agree that there is essential distinctiveness without the manufacturer’s name or brand being embossed on it - as is the case with the KitKat 4-fingered bar.

5.    This case reinforces the need for care to be taken when creating new product design if reliance is to be had on 3D shapes. Trademark law is there to protect brands and trade names but a monopoly right is only granted if the legislative standards are met.