Trade Marks

Nestle Given a Break by the CJEU

September 18, 2015

The Court of Justice has confirmed that grounds of objection cannot be combined to refuse an otherwise acceptable trade mark, and has also signified that when it comes to proving that a shape is distinctive, the consumer needs to not only recognise it, but rely upon it to identify the source of the item.

The Court of Justice of the European Union (CJEU) gave its judgment this morning in the highly anticipated “4 finger KITKAT” case.

The case stems from an application by Mondelez (formerly Cadbury) to invalidate Nestle’s trade mark registration of the shape of its KIT KAT confectionery bar in the 4 finger variant.

The case had proceeded to the High Court, which made a reference to the CJEU on 3 main issues:

1. Could a shape which had 3 essential features, each of which had an objection applying to it, be refused on the basis of the “mosaicking” of the objections?

2. Could a shape be excluded protection as a registered trade mark on technical grounds pertaining to manufacture, or is it limited to the way in which the goods function?

3. When proving that a mark is distinctive of a company, is it enough that you show that the mark is recognised as the product, or must there be reliance on the shape?

The Court has today decided that the answer is that the objection must apply to the shape as a whole – it is not permitted to “mosaic” objections; the objection cannot apply to a manner of manufacture; and the trade mark owner must show reliance.


Various news sources have reported this as a win for Mondelez, but a greater review of the case reveals that this is a strong win for Nestle. The registration was held to be objectionable on the basis of a “mosaic”, and part of that was a finding that the sloped sides of the fingers had a technical effect in making the manufacture of the bars easier (since that meant they were easier to turn out).

The Court’s decision opens the way to challenge the finding of exclusion by way of the “shape” objections, and gives Nestle a good chance of overall success. It is a long way from a full, success, however, since it leaves the possibility of further challenge on the basis that the shape is non-distinctive. This was raised and dismissed on the basis of evidence from Nestle at the filing stage, but this was evidence which showed recognition, not reliance.

The question for Nestle, therefore, is how they now move forward. We would expect Nestle to commission a further survey (if they have not already!) which is focused on showing reliance on the shape and not simple recognition, and for them to seek to introduce the evidence into this case (or perhaps a new application). Given the figures presented on recognition, it seems likely that a further survey looking at reliance will be costly, but ultimately lead to overall success for Nestle.

To find out more about this decision or to discuss any trade mark queries that you may have please get in touch with your usual contact at Swindell & Pearson or Natasha Hybner at [email protected]. Natasha is a trade mark advisor based at our head office in Derby.