The Kitkat case: why keepting your shape matters

September 25, 2018

It is ironic that Mondelez, the company behind the much-loved Toblerone bar, has managed to prevent Nestlé from registering the shape of its four-fingered KitKat as a trademark – especially because the distinctive shape of Toblerone already benefits from this protection.

Despite the commonly held myth that brands are just about having a memorable logo, this case illustrates that brands are about so much more than just a good graphic design…

HOW BRANDS WORK

Brands are built through a variety of different means. Product, packaging, logo, advertising, public relations, social media, endorsement and social activation are just a few examples of the tools that are used to try and build and occupy a valuable piece of mental real estate in the mind of the consumer.

A brand works by establishing a distinctive mix of functional and emotional characteristics, which then become associated with a specific set of identifiers, some of which are then protectable as trademarks. Trademarks are important because they stop competitors simply copying distinctive aspects of a brand, and as such, afford high levels of protection for brand owners.

TRADEMARKS ARE NOT JUST LOGOS

As well as being able to register brand names, taglines and logos, trademarks have also been successfully extended to encompass several broader identifiers. Coca-Cola has been able to successfully register the distinctive shape of its now iconic bottle shape, Heinz Baked Beans has registered its distinctive turquoise colour, Intel has registered its unique sonic identifier, and the US telecommunications firm Verizon has managed to register a ‘flowery musk scent’ for use in its consumer stores.

Brands now seek to engage all our senses – and being able to lay ownership to specific designs, shapes, colours, sounds and smells, helps to build positive attribution and therefore contribute to making brands distinctive and, in many cases, unique.

WHAT HAPPENED TO KITKAT?

So, how was Mondelez able to stop Nestlé in its quest to register the shape of its famous four fingers?

In this instance, Mondelez was appealing against an earlier decision that had granted Nestlé prior registration. Presumably, it was appealing in order to protect its own four-fingered bars, the Norwegian bar, Kvikk Luns (Quick Lunch), and the Leo bar. The European Court considered the arguments at hand and decided that Nestlé had not managed to prove the iconic status of KitKat across all countries in Europe and so effectively nullified the registration.

Following this ruling, it is now clear that to successfully register a shape as a trademark on the European trademark register, the company applying for registration must first prove that consumers in each relevant territory regard the shape as sufficiently distinctive (iconic) and importantly have come to associate that shape with the brand in question. This seems to have unseated Nestlé, but that is unlikely to be the end of the matter…

Trademarks are incredibly important; they help differentiate the goods and services of one undertaking from another. Trademarks are how we identify with the brands we love, they are the shortcuts to the unique set of functional and emotional characteristics that form a brand, and which in turn, help to generate demand and sustain repeat purchase.

KitKat has lost its registration principally because it wasn’t deemed to have provided sufficient proof to back up its application. However, you can bet that Nestlé won’t take a break anytime soon and instead, will be redoubling its efforts to achieve the successful registration.

 

Simon Bailey

An expert brand specialist with extensive experience of leading businesses and advising CEOs and senior leaders on accelerating growth.

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