Author: Bruno Darras

Last week the UK Court of Appeal ruled on the long running battle between Nestlé and Cadbury (owned by Mondeleze) over the attempt to register the shape of the KitKat bar in the UK.  Trademarks need to be a “badge of origin”. In particular registration of a shape mark requires good evidence of acquired distinctiveness to show that consumers rely on shape in a “trade mark sense”. The UK court has ruled that this is not the case for the KitKat shape. The mere fact that consumers recognise the mark is insufficient and the applicant must demonstrate that a significant proportion of the relevant public rely on the mark to indicate the product origin.

Once again this shows how applications for non-traditional marks are more vulnerable to objections for lack of distinctive character.

But it is also interesting that the industry continues to fight these costly battles. Most of us might view these disputes as irrelevant and a waste of money but the parties involved see them as a battle for an all-important edge in the marketplace. The confectionery industry is extremely competitive – the aim is to ring-fence your brand and intellectual property rights in order to block others from cutting into your space.

There are quite a few registered shape marks in the world of confectionery and many of them have seen some level of trademark dispute.

Some well-known shape marks:

The maker of the Golden Bunny, Lindt, launched a chocolate teddy bear. Haribo, which invented gummy bears in the 1920s, said shoppers would confuse the two products, even though Lindt’s bears are made of chocolate and gummy bears are jelly sweets.

Examples of colour marks:

Both these shades of purple are used for chocolate products and are owned by Kraft / Mondelez. But there has been an ongoing battle between Nestle and Cadbury about the legitimacy of use as a trademark. The British public has linked this shade of purple with Cadbury for over a century in the same way that the Milka shade is well accepted by a wider European consumer audience.

New product development is exciting – and costly. In addition to the essential R&D, market research and marketing initiatives, all products require a name which is (ideally) distinctive and available. Finding the right name in itself is a costly business that involves many steps: name & logo creation, trademark research, brand validation & strategy, trademark filing and protection). Depending on where you plan to launch and therefore protect your product name will define the costs which will probably range from $5,000 to $50,000+.

A failed product is a costly error for any company. In addition to the wasted time the failure can haunt companies for years to come. Now a new museum is opening in Sweden to celebrate these failures and hopefully to help companies learn how to succeed.

The Museum of Failure (museumoffailure.se) opens in Helsingborg in June this year with the tag line “Learning is the only way to turn failure into success”. The collection consists of over sixty failed products and services from around the world, many of which have carefully created trademarked names. The founder Samuel West comments that even big and competent companies fail. It is important to create a culture that accepts failure and learns from it.

Here are some of the branded exhibits which have failed for various reasons ranging from poor design to products that were just plain awful or simply useless.

One interesting exhibit on display is a board game called Trump, The Game. This was similar to Monopoly but with Trump dollars, Trump properties and T-shaped game pieces. Trump, The Game was launched in 1989 but only sold 800,000 units instead of the estimated two million copies. It was re-released in 2004 but still failed to impress. It is interesting to note that the original trade mark is no longer in force but a new application was filed in the US at the end 2016.