Thread by @senamisomoyo

Good Morning Inmates! With some encouragement from @thabanimnyama , your favorite lawyer has decided to try bring these IP stories to Twitter.

Gather around, today’s story is about how one of our favorite brands has been trying to to trademark a shape for over a decade.

Our story begins in the 1860s with this man, Henri Nestlé. He was a Swiss confectioner who sought to produce a wide range of dairy products using condensed milk.

In 1866, Henri started his own business which we have all come to know as Nestlé. It is currently the leading manufacturer of milk based foods worldwide.

About 10 years later, this man, Daniel Peter used Nestlé’s milk condensing processes to make what we know today as milk chocolate.

Milk chocolate was a hit in Europe! People immediately preferred it to original dark chocolate. It was lighter, smoother and more versatile. Basically, it was to be the future for chocolate lovers.

Different companies sarted to make milk chocolate. One such company is our counterparty in this story, Cadbury.

Cadbury was founded by John Cadbury in 1824 in the UK. In 1905, some time after hos death the company also started producing milk chocolate. Their recipe was to become the most beloved in the milk chocolate industry.

At the time, Nestle’s primary focus was producing baby food. The company grew rapidly during the World Wars and products like cerelac/baby formula became very popular worldwide. However, Nestle didn’t really grow their milk chocolate production.

In 1935, a UK company known as Rowntree started producing one of our Favourite chocolates, the Kit Kat. Its an amazing wafer, coated wth milk chocolate.

Rowntree had hit the jackpot with Kit Kat! They were one of the first to introduce the chocolate cover product. They marketed it as “the biggest little meal” and sold it all over the world. The idea was to have it when you take a tea break and people loved it.

Over the decades, Nestle witnessed other companies become global leaders through their chocolate production. In as much as they were leading in other industries, it must have been uncomfortable watching Cadbury and co. lead the way with milk chocolate.

Nestle started acquing various existing companies over time and selling their products as Nestle goods. One such company was Rowntree and in 1988, Kit Kats were now sold as a Nestle product worldwide. With Nestlé’s backing, Kit Kats became even more popular.

One unique feature of Kit Kats is their shape. Their consist of 4 rectangular bars which can be broken off easily and eaten individually. This shape is unique and is very different from the way most chocolate brands sold their products.

In general, like colour, one cannot have a monopoly over a shape. There are exceptions to this rule. For example, if you have been using the shape for a long time then you can claim that people now associate the shape with your product. Thus, it has acquired distinctiveness.

Surprisingly, neither Nestlé nor the previous owners thought to try and register the “four finger” shape of the chocolate. They had registered the name Kit Kat a long time ago, however, they didn’t get protection for the popular shape of their product.

In the early to mid 2000s, Nestle then attempted to register the four finger shape as a trade mark in various territories in the EU and in South Africa. They were immediately met with opposition and that triggered their decade long struggle to own the shape.

At the time Cadbury owned Norwegian chocolate brand Kvikk ( I know you didn’t try pronounce this 😂😂😂). It was very similar to the Kit Kat but it was only introduced into the market much later. Unsurprisingly, Cadbury opposed the registration of the Kit Kat shape.

Cadbury said Nestle should not have any exclusive rights to use he shape, it should be available for everyone to use. They knew that if Nestle is allowed to register their shape, then they will have to pull their similar product off the market.

At the UK IP Office, where the proceedings first began, Nestle claimed that they had been using the shape since 1935, and over the years, people have come to associate the shape with their chocolate.

In short, the examiner agreed with Cadbury. They said the four finger shape was devoid of distinctive character and Nestle cannot have a monopoly over it.

Nestle was found shaking. This decision could mean that anyone could use the shape and sell a similar product in the EU, and then possibly to the world. They quickly took the matter to the UK courts. The UK courts considered the mattered and referred it to the EU court to decide.

Throughout this dispute Cadbury had argued that the Kit Kat shape is not actually a trademark, but is intended to serve a technical function. They said the four finger shape is meant to make it easy to break off each bar, not to make Kit Kats look different from any other brand.

In the EU Court, the judge also agreed with Cadbury. They said that the four finger shape is devoid of distinctive character and no one person can have a monopoly over the shape.

...The court stated amongst other things that:

1. When people buy Kit Kat, they cannot see the shape unless they open the packet and so, they cannot say the shape is used to distinguish their product from others.

2. The bars seem intended to serve a technical function....

...which is to make it easy to break.

3. Because of the above points 1 and 2, it does not matter that they have been using the shape on their chocolate for 80+ years.

The EU judgement was passed in 2018 and Nestle is considering fighting on. They will have to not only fight in the EU, but also fight people in other countries who will no doubt try to use the shape.

Whilst the UK/EU case was ongoing, in 2014, a comoany known as Iffco started selling the four finger shape chocolate in South Africa. No doubt they were trying to ride off the coattails of Kit Kat.

Nestle took the matter to court and it ended up in the Supreme Court of Appeal. They were going to have luck in Jacob Zuma’s South Africa. At the outset, the judge at the SCA recognised that the Kit Kat shape (which was registered in SA) was a distinctive feature.

The SCA agreed with Nestle and stated that the shape qualified as a Trade Mark. Iffco would subsequently be infringing on the Kit Kat shape. Trade Marks are territorial and although SA courts can refer to foreign judgements, but they are not bound by them.

The SCA also stated that to allow Iffco to use the shape, would be weakening Nestlé’s four fingered shape. So in SA, Nestle still has a monopoly.

I’m all ears, would like to hear what you guys think. Should the Kit Kat shape be seen as a badge of origin or do you think its only purpose is to help you break the chocolate bar.

NB: If you eat a Kit Kat like this, then you honestly deserve to go to prison.

Big lesson: If you use a non-distinctive feature such as a colour, shape or descriptive words as a trade mark, make sure that its sole purpose is to distinguish and not to serve a technical function. Stay safe good people!! ❤️💛💚

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