January is often known as a month to start afresh; to sneak in a workout instead of that cheeky pint, to swap angel delights for avocados or to just try something new. Yet this was not the case for confectionary giants Cadbury and Nestle who continue their sweet obsession of doing battle in the courtroom.

In the latest developments in their seemingly endless list of litigious issues, the High Court followed the Court of Justice of the European Union in ruling that the famous four fingered KitKat was not a registrable trademark. The news breaks in the same month as the London Taxi Cab company was also prevented from obtaining a trademark for its iconic Hackney Carriage design. This has paved the way for Frazer-Nash’s Metrocab to add to growing competition to the traditional black cab dominance in London.

So what can make or break the trademark of a shape?

Section 3 of the Trade Marks Act 1994 lists absolute grounds for refusal of attempts to register a Trademark and shapes seeking trademark protection must have a degree of distinctiveness to be able to be registered. The concept of distinctive character links directly to the underlying rationale for trademarks; that they allow the average consumer to ascertain the origin of goods from the mark. Whilst the black cab may be iconic, a high court judge ruled that it lacks distinctive character to be registrable as a trademark and was merely a slight change to the typical taxi that an everyday consumer would recognise.

Charlie and the trademark factory

The chocolate world is a huge industry and chocolatiers are constantly trying to protect their innovations from their competitors. Whilst that sneaky Toblerone that finds its way back from duty free has protected its zigzag prism through a trademark, KitKat failed to prove that the chocolate bar itself was enough for a consumer to rely on the shape in order to distinguish the origin of the goods from others. Chocolatiers Lindt can sympathise with Nestlés woes, as they failed in their attempts to register the shape of the Easter Lindt Bunny as a trademark. Unfortunately the ribbon with the bell, the shape and the colour was not substantially different from the wrapping of other wrapped chocolate rabbits, highlighting the importance of ensuring your trademark is distinct!

Standing out from the crowd is fundamental to the success of your business meaning the protection of the names and logos of your company is paramount. We can register your trademark in the UK, Europe and the rest of the world. Why not contact us today to book your free consultation to discuss your legal requirements in further detail, we’ll be delighted to talk to you!

The contents of this article are intended solely for information purposes only and should not be construed as legal advice or financial advice or opinion in any specific facts or circumstances.

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Ryan Lisk

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Ryan has helped a vast number of businesses protect and control their intellectual property as well as drafting and advising on consumer and commercial contracts.

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