Nestle has been involved in a long-running legal battle in a number of countries with confectionery rival Cadbury over Nestle’s efforts to monopolise the KitKat shape since the first application for the shape was filed in 2010.

In this latest instalment, the UK Court of Appeal has ruled against Nestle. Nestle argued that the shape of its KitKat bars has been associated with the company since the chocolate treat was launched in 1935, citing a survey that showed 90% of consumers associated an unbranded four-finger chocolate bar with Nestle’s product.

However, despite the evidence, EU and UK courts have consistently blocked the four-finger shape from registration, deciding that the shape alone is not distinctive enough for consumers to definitively identify chocolate bars as KitKats. The existence of a similarly-shaped bar produced in Norway since 1937 called Kvikk Lunsj, which is apparently available in some UK shops, did not help Nestle’s case.

Distinctiveness is a key test in assessing whether or not a trade mark is eligible for registration. This test makes shape trade marks in particular very difficult to register, as the shape must have “distinctive character”. Trade marks (including shape marks) which are not, on the face of it, distinctive, can acquire distinctiveness through their use. In New Zealand, the test for acquired distinctiveness requires that “…the relevant class of persons, or at least a significant proportion thereof, identify the goods as originating from a particular undertaking because of the trade mark” or in other words, through use of the mark, consumers perceive the goods as originating from a particular company.

Few shape marks make it on to the Trade Marks Register in New Zealand. Although, interestingly, Whittakers' “Santé Bar” shape became registered in 2015, 5 years after the application was filed. Another Kiwikid icon, the Weet-Bix bar, is also registered.

The latest UK KitKat decision confirms that it remains very difficult for businesses to demonstrate that the shape of their product has acquired distinctive character through use and can be registered as a trade mark. Whether it is worth the time and money registering shape marks is another important consideration, as shape marks are not only difficult to register, but hard to enforce. Shape marks are also more likely to face challenges as to validity. Perhaps a more savvy branding strategy is to ensure that key brands and logos are protected to the extent possible, particularly as the courts seem to think that consumers buy products based on these "badges of origin" rather than the shape of a product.