Nestlè defeated in South African trademark row

2013/12/06

A South African court has ruled that the shape of a four and two "fingered" chocolate bar was not too similar to three-dimensional trademarks owned by Nestlè.


The dispute, heard at the Pretoria High Court, related to the Tiffany Break chocolate bar, which is produced by United Arab Emirates-based consumer goods company Iffco.


The bar, which comes in purple packaging, is presented in sticks of two or four “fingers” of chocolate.


Nestlè argued the product was too similar to its renowned Kit Kat product and that presenting the chocolate in “fingers” would cause confusion among consumers who would assume it was a related product.


It also said the use of the word “break” in the title was too similar its own “Take a Break” slogan, which it holds various trademarks for.


But, in a ruling published on November 27, Judge Andrè Louw rejected the claims and ruled that confusion among consumers was unlikely.


“Based on the overall impression given by the marks, I do not believe that there is a likelihood that consumers …. would be confused or confused into believing the product is a Nestlè product,” Louw wrote.


“I am satisfied that a customer would not regard the presence of the depiction of the chocolate fingers on the respondents’ packaging as ... a link between the respondents’ product and the owner of the marks.” 


Louw added that customers would see the depictions of the chocolate fingers as an “indication of what is contained inside the package” and would not necessarily associate it with a Kit Kat.


As well as the 3D trademark, Nestlè had registered trademarks for the slogans, “have a break…have a Kit Kat”, “have a break, have a Kit Kat”, “have a break” and “take a break.”


It claimed that “break” was the dominant word in all of its trademarks and that its use on the Tiffany Break product amounted to infringement.


However, Louw denied it was the dominant word, especially when considering the trademarks “have a break…have a Kit Kat” and “have a break, have a Kit Kat.”


Louw added that Nestlè had “not provided any evidence” to substantiate its allegations that Tiffany Break was detrimental to the finger wafer model, despite the products “sitting side-by-side for nine years.”


It is not the first time Nestlè has struggled to protect the shape of the Kit Kat as a trademark.


In July the UK Intellectual Property Office (IPO) rejected an application by Nestlè to trademark the four finger Kit Kat shape following opposition from Cadbury.


In that case, the IPO found the shape is “within the norms and customs of the sector” adding it was a “mere variant on common shapes for chocolate bars and biscuits.”


Nestlè and Iffco did not respond to requests to comment.


(Source: WIPR)