The Kit Kat decision has attracted considerable interest, not least because the Kit Kat product shape trademarks have been controversial. The issue in the SA litigation was this: had the company Iffco infringed Nestle’s registrations for the shape of the Kit Kat chocolate bar and for the slogans ‘Have a Break’ and ‘Have a Break, Have a Kit Kat’, by selling similar-looking chocolate in packaging that contained the word Break in large script (as a brand name), as well as depictions of the product itself. The court made a number of findings: • Nestle’s product shape registrations were valid. The shape was not necessary to obtain a technical result and did not result from the nature of the goods – the argument here was that the trapezoidal shape was a necessary part of the moulding process, and that the technical result obtained was the easy release of the chocolate bars from the mould.

• There was no origin-confusion infringement. Not of the shape registrations, because consumers of the Break product would see neither the depictions of the product on the packaging, nor the product itself, as suggesting a material link with Nestle. And not of the slogan marks, because there was a disclaimer of the work ‘break’.

• There was no dilution because there was no proof of detriment or unfair advantage – the fact that sales of the Break product were on the up could be down to all sorts of factors.

• There was no passing off because there was no confusion. There was also no infringement of the special ‘well-known marks’ provision because this doesn’t apply to registered marks.

• Nestle had lawfully amended one of its slogan mark applications by inserting the wording: ‘The mark consists of the distinctive shape or appearance of the goods.’ This did not fundamentally affect the nature of the mark (by transforming it from a logo mark to a shape mark) and, in any event, the prohibition on making material changes applies only to registered marks, not pending applications. If this finding stands, it will have serious consequences for trademark searching.

This case can still go up to the Supreme Court of Appeal. Given its importance, maybe it should!

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