Nestle is likely to continue to push for the shape of its four-fingered KitKat bar to be recognised as a trademark, even following a setback from the European Court of Justice, intellectual property lawyer at Mishcon de Reya, Sally Britton predicted.

In a judgement today (16 September), the European Court of Justice rejected Nestle's attempt to gain a trademark for the shape of its KitKat chocolate bar, suggesting that the shape itself is not distinctive enough for consumers to associate it with the brand.

Commenting on the outcome, Britton said the judgement was "mixed" for Nestle. "It succeeded on some points, but appears to have lost on one key one. Most notably, the court has stipulated that an applicant for a trade mark protecting the shape of goods – here, the four fingered KitKat bar – will have to prove that the public rely on that shape alone to identify its goods with the trade mark owner. If the goods display any other trade marks, such as the brand name KitKat, then it will be very difficult for brand owners to show that the public rely on the shape of the goods alone, as opposed to the brand name, to identify them."

Nestle first attempted to gain UK trademark protection for the shape of its four-fingered KitKat bar in 2010. This was contested by Mondelez International in 2011. A court in 2013 rejected the trademark bid saying it was "devoid of inherent distinctive character," which Nestle then appealed.

The case will now return to the UK High Court for further consideration.

"Nestle is likely to continue fighting this point even if, as now appears likely, the English court decides that the KitKat shape should not be registered as a trade mark. Nestle has a lot of experience with trying to register difficult marks – it took over 40 years to register the slogan "Have a break" as a trademark – finally succeeding in 2006, having first applied in 1975," Britton observed.

Both Nestle and Mondelez International said they were “happy” with the European court's ruling.

A spokesperson for Nestle said: "Nestle is pleased with the decision of the Court of Justice of the European Union and now looks forward to the decision of the UK High Court." The company did not comment on whether it intends to continue to push for trademark protection of the KitKat shape should the UK court reject its application. 

Meanwhile, Mondelez insisted that the ruling supported its argument that the KitKat shape is not distinctive enough to be trademarked. "We are pleased by this ruling by the European Court of Justice which is in line with our contention that the shape of the KitKat bar is not distinctive enough to be protected as a trade mark," a spokesperson for the company argued.