An excellent example of the inherent difficulty in trade marking a shape can be seen with Nestle’s ongoing battle against Cadbury for its four-finger bar. Their bid has been going since 2010 and in May 2017 was thrown out by the court of appeal, a blow to the company that has been fighting for its product shape for so long. LEGO is another well-known brand that has so far been unable to trade mark its iconic brick shape. So, why is it so difficult?

1. The difficulty of 3D trade marks
An excellent example of the inherent difficulty in trade marking a shape can be seen
with Nestle’s ongoing battle against Cadbury for its four-finger bar.
Their bid has been going since 2010 and in May 2017 was thrown out by the court of
appeal, a blow to the company that has been fighting for its product shape for so
long. LEGO is another well-known brand that has so far been unable to trade mark
its iconic brick shape. So, why is it so difficult?
Registration limits
Limits have been implemented to stop companies from gaining control over technical
solutions. This covers the way a product functions and its main characteristics,
including its shape. European law has three limitations in place meaning it’s not
possible to trade mark a shape if:
1. The product is a shape resulting from the nature of itself.
2. The shape of the product gives value to the goods.
3. The shape of the product is necessary for technical results.
If a product isn’t excluded because of these three impediments, it can potentially be
trade marked. But only if it satisfies the criteria for distinctiveness necessary for any
trade mark. To meet the essential criteria of a trade mark, the shape has to be
significantly different from the norm in the sector.
Nestle’s KitKat battle
Nestle filed its first application to register a trade mark for its four finger KitKat bars in
2010, and was accepted initially. However, Cadbury jumped in to oppose the
registration and the case has bounced between courts for years.
It wasn’t until May 2017 that the UK court of appeal ruled that the bar has “no
inherent distinctiveness” and therefore cannot be trade marked for its shape.
Successful ‘shape marks’
While Nestle may have failed to convince the courts that a KitKat is synonymous in
consumers’ minds with its shape, others have been successful. Coca Cola registered
the iconic shape of its bottle successfully, as did Toblerone with its distinctive bar.
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