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Trade Marks - The KitKat Appeal: How does a Shape Mark acquire Distinctiveness?

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Jane Lambert

Société Des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358 (17 May 2017)

Unregistered design right subsists for no more than 15 years. A design registration for only 25. But a trade mark registration can last forever. That no doubt explains why La Société des Produits Nestlé S.A ("Nestlé") has persevered with this case despite losing to Cadbury UK Ltd ("Cadbury") in the Trade Marks Registry and on appeal.

The Issue

S.1 (1) of the Trade Marks Act 1994 provides that any sign can be a trade mark so long as it is "capable of being represented graphically" and "capable of distinguishing goods or services of one undertaking from those of other undertakings." The section gives some examples one of which is "the shape of goods or their packaging."

On 8 July 2010, Nestlé's trade mark agents applied to the Intellectual Property Office ("the IPO") to register the shape of the KitKat bar shown in the photo above as…