The confectionery giant was recently dealt another blow by the Singapore Court of Appeal at the end of last month.
Nestlé had appealed the Singapore High Court’s decision of November 2014, which found that Nestlé’s KitKat shape marks were invalid and therefore not infringed by Perta Food’s Take-It bars.
Unfortunately for Nestlé, the appellate court agreed with the decision of the lower court and went on to find that Nestlé’s KitKat shape marks in Singapore are devoid of distinctiveness and have not acquired distinctiveness through use.
This decision followed Nestlé’s woes in the UK, where the High Court held earlier in the year that the Nestlé 4-bar shape mark lacked distinctiveness and could not be registered as a 3D shape trademark in the UK.
Interestingly, Nestlé has successfully enforced similar rights (for its 2-finger and 4-finger bars) against a third party in South Africa, by virtue of a decision of South Africa’s Supreme Court in 2015. However, despite the South African decision, the trend is certainly against Nestlé in the majority of jurisdictions and does seem to pull into question the distinctiveness of their KitKat shape marks.
Nestlé’s struggle shows the difficulties a brand owner can face when trying to enforce similar shape mark registrations in different jurisdictions and the need to have flexible and effective protection and enforcement strategies.
Stobbs works with a wide variety of brand owners to help protect and enforce their brands. If you would like any advice on branding issues, please do get in touch.