It’s All About The Shape

Alefiya Kagda & Excelon IP Design Trademark is a simple thing, yet complicated. Let us understand it, with some beautiful examples. But first, let’s start with the basics. So first of all, What is Intellectual Property Rights? So, IPR is a simple term which relates to things you create with your mind, or the expression of ideas in some form. A thought that’s been floating around your head may be a great idea for a future product, but isn’t yet IP(Intellectual Property). This includes mainly four sections: 
  1. Trademark (including design rights)
  2. Copyright
  3. Patent
  4. Trade secrets
We will go in-depth on the  “Design Trademark” from hereon. First of all, what is a design trademark? It is like protection of unique shape or a feel of the product or aesthetics of an article. These rights are protected by an international treaty which is one kind of benefit. There are some criteria during filing of design trademark
  1. It should be new (no copy or something)
  2. Must be original
  3. Must be an industrial character
The design trademark has many aspects. One of them is – Shape. Three-dimensional shapes can in principle be protected as trademarks (as so-called shape marks or form marks), but not if the shape constitutes an “essential characteristic of the product”.  To decide whether a shape constitutes an “essential characteristic of the product” varies from case to case, and hence is a bit complicated. To make it clearer, we will take 2 recent trademark battles related to shape. These are as follows:
  1. Kit Kat vs Kvikk Lunsj for Four-Fingered Chocolate
  2. Ritter Sport vs Milka for Square Shaped Chocolate.
  1. Kit Kat vs Kvikk Lunsj

Kit Kat’s four-fingered chocolate bars – hit the market in 1935, which were earlier known as Rowntree’s chocolate crisp. An exactly similar shaped chocolate was launched by Norwegian bar Kvikk Lunsj in 1937. The design of the bars is the same, and for 65 years, the two crispy treats lived together in harmony – until Nestlé went on the offensive. In 2002, the global chocolate giant applied for a trademark in Europe for Kit Kat. There was no issue with the bar itself, embossed with the Kit Kat logo. But it also applied for the trademark for the shape of a Kit Kat – or “four trapezoidal bars aligned on a rectangular base” Nestle argues that the four-fingered version of the chocolate-covered wafer snack should become a trademark in the UK, possibly preventing similar products from being made. It says that, without the red-and-white packaging, and even without the word KitKat embossed on the chocolate, it should be regarded in law as distinct. Nestle mentions that, over time, its physical form has acquired a distinctive character associated with the company and should become a trademark. It cites a survey in which 90% of people shown a picture of the bar, without any names or symbols embossed on it, mentioned Kit Kat in their comments. After four years of back-and-forth, the EU trademark granted Nestlé the shape as a trademark. But Parent Company of Kwik Lunsj, Modelez says otherwise & started a long-running battle with Nestle, over its received trademark. Mondelez says the shape is merely a result of being a cheap and easy way to manufacture a chocolate wafer bar, with other products made similarly. David Rose, Head of intellectual property at law firm King & Wood Mallesons says that someone saying “Kit Kat” when they see four-fingered shape chocolate, is not enough for a trademark to be registered”. The definition of a trademark is that it distinguishes the goods and services from those of another company, which in this case Mondelez is not ready to agree to. The main concern of Mondelez is that by registering this trademark, Kit Kat won’t allow Kvikk Lunsj sale in the UK, which is undoubtedly similar. The dispute went on for a decade and this trademark plea of Kit Kat was rejected by the High Court after rival confectioner Mondelez opposed it. John Coldham, partner at the UK law firm Gowling WLG, said that rather than cancelling the trademark the court decided it should never have been awarded at all based on the evidence studied. That means the decision heads back to the EU trademark office. So the Kit Kat is set to lose its EU trademark – for now. “But there is still a fight to be fought,” says Kit Kat, and we will know where this fight for the design rights end into.

2. Ritter Sport vs Milka

Ritter Sport is well-known square-shaped chocolate, which is unique in itself, as most chocolates are rectangular shaped. The square shape was a selling point for Ritter Sport, which other competitors also tried to utilize. This became a starting point of another trademark battle on chocolate shapes. Kitkat couldn’t get a trademark for the four-fingered trapezoidal shape, as it was not the only distinguishing factor about the chocolate. Let’s know what happened with Ritter Sport’s square-shaped chocolates. The square bar dates back to 1932, when Clara Ritter came up with the idea, according to company legend. “Let’s make a chocolate bar that fits in everyone’s jacket pocket without breaking and weighs the same as a normal long bar,” she is supposed to have said (although in German). By 1970 it had come up with the slogan “Quadratisch, praktisch, gut” – quality, chocolate, squared, as the company likes to translate it. The family company clearly was emphasizing on the square shape as their unique selling point and further registered the shape with the German patent and trademark office in 1993. In 2010, Milka began marketing a square bar, which had a similar square shape as Ritter Sport. This began a war, where Ritter Sport opposed it, and Milka argued that the square shape was an essential factor of the chocolate, and not something unique and distinguishing, which can be trademarked. Chocolate manufacturer Ritter has had the famous square shape of its Ritter Sport chocolate protected as a trademark (No. 398 69 970) since 2001.  This trademark has been contested by competitor Milka in court for years. Mondelēz argued the square shape of a chocolate bar is simply a technical function of the product rather than a trademark – worthy quality. Under European legislation, a three-dimensional form cannot be trademarked if it is an “essential functional characteristic” of the product. Overturning the trademark rights would have proved a significant advantage to rival brand Milka, as allowing any brand to offer square-shaped chocolate products could have made the Ritter Sport brand less distinctive. In 2016, Milka succeeded in getting the trademark deleted, but this ruling was later dismissed in October 2017, when the German Federal Court of Justice stated that only Ritter could sell square chocolate bars.

Here’s what the judges said:

  • Normally a brand cannot claim protection in Germany if its shape gives the product “an essential value”. But the judges, in this case, said Ritter Sport was different.
  • Consumers considered the square nature of the chocolate bar as an indication of both where the chocolate came from and its quality, they concluded.
  • They said there was no artistic value to the shape and it did not lead to differences in price.
Their ruling means that the incumbent bar can remain the only top-brand square chocolate bar on the shelves in German shops. Thus Ritter Sport won the trademark for its square shape, unlike Kit Kat, because from the starting point onwards, the square shape was highlighted as their unique selling point, and as iterated by the Court, it was not an “essential value”, but rather different. Thus, protecting shapes by a trademark is a tedious but beautiful process. The above examples make us understand more clearly different aspects surrounding a Design Trademark for Shape.