Nestlé has successfully appealed Aldi’s opposition to registration of a 4 bar Kit Kat as a trade mark:
Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership)  FCA 218
The trade mark is TM No. 822780 for this:
The endorsement reads:
The trade mark consists of the shape of the goods, being four bars attached to one another by a thin base as depicted in the representations attached to the application form.* * Accepted under the provisions of subsection 41(6).*
Now, the appeal was resolved by consent. There is an interesting practice point there Nicholas J, an experienced IP practitioner before going to the Bench, explains the rationale for allowing appeals on this basis.
The larger questions are of course how did Nestlé get it accepted and what can they do with it?
The endorsement indicates that the sign was accepted on the basis of acquired distinctiveness under s 41(6). It would appear from the Opposition decision, there was (as you would expect) enormous sales and advertising and a survey indicating 77% of the public would identify the shape as Kit Kat.
Consistently with the approach taken by the Full Court in BP Green (cf  and [121-122]), the Hearing Officer upheld the opposition on the ground that the shape was not used as a trade mark. Decision here (pdf – I couldn’t find it on Austlii).
Of course, we don’t know what evidence, if any, Nestlé filed in support of its appeal, which might have persuaded Aldi to withdraw.
Next, what happens if Aldi or Coles or Woolworths start selling a chocolate with 4 bars like the shape above wrapped in their own packaging? At the Opposition hearing, Nestlé argued that post sale use, such as unwrapping the chocolate after sale, could constitute use as a trade mark citing Kabushiki Kaisha Sony Computer Entertainment v Nuplayer Ltd  EWCH 1522 (Ch D) in support. Given his conclusions on other points, it was sufficient for the Hearing Officer to assume this was the case. How it sits with Re Yanx’ TM might be another matter.
What happens to those people who are selling 1 finger or 2 bar variations on a theme? Shades of Adidas’ 3 stripe wars.
Share on Facebook