Nestlé Loses Another Battle to Protect KitKat Design as a Trademark

Following a loss in the United Kingdom early this year, Nestlé has been dealt yet another blow in connection with the shape of its KitKat chocolate bar. According to a ruling from the Singapore Court of Appeal, the two- and four-fingered shape of the KitKat bar is not protected by trademark law. In a judgment handed down on Thursday, the five judge panel for the Court of Appeal affirmed a 2014 decision by the Singapore High Court, dismissing Nestlé’s trademark infringement lawsuit against Singapore-based Petra Foods in connection with a lookalike candy bar.

The Swiss food and beverage company registered the two-finger and four-finger shapes of its KitKat bars as trademarks in Singapore several years ago and then filed suit against Petra in 2013, which makes similarly shaped chocolate wafers marketed under the brand “Take-It,” for trademark infringement. Petra countersued to invalidate Nestlé’s registered shapes, arguing that they cannot be considered trademarks under Singapore law.

In an 85-page judgment delivered by Chief Justice Sundaresh Menon, the court held that the shapes of Nestlé’s KitKat bars lack inherent distinctiveness and have not acquired a sufficient level of distinctiveness through use to warrant trademark protection. For the uninitiated, distinctiveness – either inherent or acquired – is a central trademark tenant which requires that a trademark (whether it be a word, name, symbol, or design, or any combination thereof) serve as an indication of the source of a particular good and/or service.

While the average consumer is capable of recognizing the shapes of the KitKat design and associating them with KitKat, the court said Nestlé failed to show that the average consumer treated the shapes as a definitive indication of origin. Moreover, the court held that the shape of KitKat bars cannot be granted trademark protection as the shape is “necessary to obtain a technical result;” Petra's lawyers argued in their countersuit that the shape was necessary for efficient mass production.

This case comes on the heels of similar litigation between Nestlé and Cadbury. Earlier this year, Justice Richard Arnold of the British High Court of Justice held that Nestlé had not promoted the chocolate bar’s shape as one of its selling points, thereby standing in the way of protecting the shape as a trademark. “In these circumstances it seems likely that consumers rely only on the word mark KitKat and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KitKat (and therefore, with Nestlé), but no more than that,” he said. “Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

A spokesman for Nestlé said of the ruling: “We believe the shape deserves to be protected as a trademark and are disappointed that the court did not agree on this occasion. We are taking the necessary steps to appeal this judgment.”

* The case is Societe Des Produit Nestlé SA v Petra Foods Ltd ([2014] SGHC 252).