21 September 2015

In 2011, a Belgian photographer was granted a very rare opportunity to enter a Yakuza family and peek into their lives for 2 years.

One of the traditions he uncovered was the voluntary severing of a finger by a Yakuza member if he makes a mistake, and the presentation of that finger to his senior. Essentially, after you make your first mistake, you are expected to sever a finger, making your hand four-fingered.

 

At this point, you’re probably thinking: what does this have to do with intellectual property?

Let me answer that question with another question: What does a four-fingered hand have in common with a KitKat?

Answer: Both of them have four fingers. (See, there is a logic lurking in the madness. Or perhaps, it is just madness.)

 

Nestlé’s four-fingered KitKat chocolate has become a global icon since it was first manufactured in 1935. It isn’t surprising that Nestlé tried to trademark the unique 3D four-fingered nature of this chocolatey goodness in July 2010, in the year KitKat turned 75 years old.

Nestlé’s bid to register the shape of a KitKat as a trademark in the UK was rejected by the European Court of Justice.

 

The trademark application was initially approved by the Trade Marks Registry of the UK Intellectual Property Office (UKIPO) in 2010. As part of the trademark process, the trademark was published for the purposes of opposition. Good ol’ Cadbury seized this opportunity to file an opposition notice challenging the application of the trademark.

It went from the examiner at the UKIPO to the High Court of Justice of England and Wales, and the European Court of Justice. Ultimately, it was ruled the shape was not distinctive enough to be trademarked.

This is sweet revenge (Ha!) for Cadbury, whose Cadbury purple trademark was challenged successfully by Nestlé.

 

In case you were wondering, a 3D shape can be trademarked in Australia as well. This might be your chance to get strong trademark protection for your unique product shape. To find out more about trademarks, see our article on trademarks here, and our infographic.

Get started on your Trademark Application now, or call us on 1800 LAWPATH for more information.

Let us know if you prefer Dairy Milk or KitKat by tagging us @lawpath or #lawpath.

Dominic Woolrych

Dominic is the CEO of LawPath, dedicating his days to making legal easier, faster and more accessible to businesses. Dominic is a recognised thought-leader in Australian legal disruption, and was recognised as a winner of the 2015 Australian Legal Innovation Index.