“Have a break? Have a Kit-Kat!”
What immediately strikes your mind is the four-fingered wafer shape, right?
What if we tell you now even if the chocolate looks like a Kit-Kat, it might not be. Well, there has been a long battle between Nestle and Cadbury fighting over the shape trademark in European Union.
Photo taken from www.bbc.com
The long saga between the 2 giant chocolate manufacturers cost more than millions has finally come to a temporary stop whereby the European Union Court ruled that the familiar shape of Kit-Kat iconic four-finger is not distinctive enough to be registered as EU trademark. Kit-Kat’s EU shape trade mark is annulled, meaning the Kit Kat shape is no longer a valid trade mark across the EU.
Whilst the trademark against the chocolate name “Kit-Kat” is straightforward and undisputable, shape trademark is complex on itself. However, there are times where the owner thinks that the shape is so distinctive and valuable in its recognition to the brand.
In the case of shape, the distinctiveness will need to be acquired through the recognition of the product itself and the long history of commercial use.
In Malaysia, can you trademark a shape? Yes, you can. This is made possible with the enactment of the relatively new Trademarks Act 2019. Other than shape, other non-traditional marks registrable under the Trademarks Act 2019 include colour, sound, scent, hologram, positioning and sequence of motion marks.
However, not all shapes are qualified to be registered as trademark. For example, a shape resulting from the nature of the goods itself may be rejected for lack of distinctiveness as it describes the goods which the mark is to be used. Shapes, in particular, are inherently difficult to acquire its protection under trade mark law. Whilst it is difficult, it is not totally impossible. New applicants for shape trademark should focus in creating a mark that is inherently distinctive to strengthen the application.
Some of the pointers to strengthen the shape mark are as follows:-
(a) when the company started using the shape? The longer the better
(b) Whether the average consumer associating the shape with the brand?
(c) visibility of the shape or is it covered with wrapper?
(d) The use/functionality of the shape – was it rather a technical design?
For example Kit-Kat, is it designed to allow consumers to easily break one bar into four smaller parts?
Every case is unique on its own facts.
Can you think of a special shape that is connected to a particular company or product? How about the shape of a perfume bottle or handbag?
We have more than 10 years of experience in the field of intellectual property and have successfully assisted in solving many intellectual property issues.
If you encounter any interesting issues on intellectual property, feel free to WhatsApp us.
Comments