Courts Deny Nestle

Used under a Creative Commons Licence

Food&Drink Business Magazine – Courts Deny Nestle

This is an updated version of an old post, click here to see the original.

How chocolate shapes, colours and packaging can (and can’t) be protected as trade marks

Chocolate brands pour millions into making their products instantly recognisable – from the shape of a bar to the colour of the wrapper. Yet, as the famous Kit Kat case shows, not every clever design can be locked up as a trade mark.

In this article, I explain in plain English what happened when Nestlé tried to protect the four‑finger Kit Kat shape, why the court said “no”, and what modern chocolate and confectionery brands should learn from it if they want to protect their IP in Australia.

The Kit Kat shape trade mark: what went wrong?

Nestlé already owns a suite of trade marks for KIT KAT – words, logos and packaging for chocolate and confectionery products. It then tried to go one step further: registering the shape of the four fingers attached to a thin base, without the KIT KAT name on top.

If this had succeeded, Nestlé would effectively have had exclusive rights to that four‑finger shape for chocolate.

To support the application, Nestlé commissioned consumer research. Hundreds of Australian consumers were shown a plain, brown, four‑finger “bar” (no KIT KAT word). Almost 80% reportedly associated the shape with Kit Kat. This evidence was then used to argue that the shape had become distinctive of Nestlé.

But Aldi opposed the application. It sells its own wafer chocolate (e.g. products like Dairy Fine bars) and argued that the shape should not be monopolised because it was essentially functional – it allowed the bar to be snapped into individual fingers.

The hearing officer agreed with Aldi.

The key points were:

1. The “ready‑to‑snap finger‑like portions” were seen as a functional shape, designed for convenient breakability, not as a badge of origin by itself.
2. The advertising reinforced function: “Have a break” campaigns, visuals focusing on snapping a finger off the bar, and emphasis on portioning the chocolate.
3. Unlike other shape marks (for example, very stylised or unusual shapes), there was nothing “extra” in the Kit Kat bar shape that made it distinctive in its own right.

The result: Nestlé’s four‑finger shape, without branding, was found not distinctive enough to be registered as a trade mark in Australia at that time.

Shape trade marks in chocolate: what can be protected?

The Kit Kat decision does not mean that shapes or “look and feel” can never be protected. It does mean the bar is high. Over the years, a number of chocolate and confectionery shapes and “non‑traditional” marks have been registered, including:

1. A particular shade of purple or lilac for chocolate wrapping.
2. Distinctive three‑dimensional shapes (for example, character shapes like certain frogs or bears).
3. Unusual bar profiles or “peaks” that are clearly different from ordinary slabs or fingers.
4. The common thread is that the shape, colour or feature must be:
5. Distinctive – consumers see it as a sign of where the product comes from, not just a practical design.
6. Not purely functional – if the shape mainly makes the product easier to hold, stack, snap or manufacture, it will struggle as a trade mark.

Even today, chocolate brands still try to push the boundaries – using bold colours, sculpted bars, limited edition shapes and playful character moulds. The more unusual and consistently used your design, the better your chances of protecting it.

Modern chocolate brands: lessons from the Kit Kat case

Whether you are a craft chocolatier, a dessert brand, or a large FMCG company, the Kit Kat case offers practical lessons:

1. Start early on IP strategy
   Don’t wait until you are in a fight with a supermarket or a copycat brand. Build a registration strategy around names, logos, taglines, packaging and, where appropriate, distinctive shapes or colours.
2. Separate “look” from “function”
   If a feature is mainly there to make the product easier to snap, hold or pack, assume it will be treated as functional. If you want trade mark protection, add distinctive visual elements that go beyond pure function.
3. Use your brand consistently
   Over time, consistent use of a particular shape, colour or packaging style can help show that consumers link it to you – but only if you use it as a badge of origin, not just as a convenient design.
4. Back yourself with evidence – correctly
   Consumer surveys, sales data and advertising records can be powerful, but they must be designed and presented carefully. The Kit Kat research helped, but it was not enough to overcome the functional nature of the shape.
5. Don’t rely on shape alone
   Even if your product has a clever mould or configuration, you should still ideally protect:

• Your brand name and logo.
• Distinctive packaging and label design.
• Any taglines, sub‑brands or series names.

Kit Kat, Clicks and Courtroom Drama: A Quick Bite of Nestlé’s Shape Trade Mark Battle

The original article explains how Nestlé tried to register the four‑finger Kit Kat shape (without the KIT KAT word) as a trade mark for chocolate in Australia, and why that attempt failed. Nestlé relied on heavy use and survey evidence showing consumers strongly associated the bare shape with Kit Kat, but the hearing officer held the shape was mainly functional – “ready‑to‑snap” fingers that make the bar easy to break – rather than a distinctive badge of origin.  To read the full original article, click here: F&D-Nestle-08.pdf

Please note the above article is general in nature and does not constitute legal advice.

Please email us info@iplegal.com.au if you need legal advice about your brand or another legal matter in this area generally.