NIKKI RIGL – Two of the chocolate giants—Mars and Nestle—have undergone disappointing branding incidents this year: Mars’ attempts to start selling M&Ms in Sweden and Nestle’s attempts to trademark the shape of its KitKat candy both fell flat.[1] Strangely enough, the rationales behind each decision seem to thematically contradict one another.
In an effort to stop other chocolate brands, like Cadbury (Nestle’s long-term confectionary nemesis), from producing a KitKat-like chocolate bar, Nestle has been trying to trademark the four-fingered shape of the KitKat since 2010.[2] The European high court reached a final decision in January 2016: the KitKat shape was not distinct enough to deserve trademark protection.[3] The opinion further reinforced the idea that Nestle does not promote the four-fingered shape of the KitKat in its advertisements—based on advertisements, Nestle focuses more on the “crispy crunch” that resounds when one bites into the chocolate-covered wafer bar—and that the opaque red wrapper that encapsulates the KitKat bar keeps consumers from seeing the four-fingered shape until after the packaging has been torn off.[4] The distinctiveness of Nestle’s four-fingered KitKat was further weakened by the existence of Kvikk Lunsj, a Norwegian chocolate covered wafer with a very similar resemblance that has been around for about as long as Nestle’s KitKat.[5] This decision seems to yield to the notion that no chocolate brand should become a monopoly: allowing only Nestle to produce a four-fingered wafer is akin to allowing only one denim company from producing a particular cut of jeans, and that simply hinders the creativity and necessary competition upon which intellectual property is predicated.
As per an agreement between two confectionary brands—Mars and Mondolez—Mars was banned from selling M&Ms in Sweden, Norway and Finland because the lower case “m” on Mars’ circular chocolate candies too closely resembled the lower case “m” stamped onto Mondolez’ chocolate bars and chocolate topped peanuts already in circulation in those countries.[6] This agreement, however, expired in 1998 and Mars decided in 2009 to debut its iconic M&Ms in the previously-forbidden Scandinavian countries.[7] Mondolez took legal action soon after and, on June 8, 2016, the Svea Court of Appeals ruled against Mars, agreeing with Mondolez that the lower case “m” on each of the brands’ chocolate treats were too confusingly similar.[8] If Mars still desires to market its brand in Sweden, it will have to manufacture a new variety of M&Ms: candy-coated chocolate circles emblazoned with capital Ms.[9] It is hard to see why a capital letter is deemed so distinct from a lower case letter, but a letter in cursive script is not deemed distinct enough from one in printed script. Perhaps this decision will be appealed.
A contradiction arises when one examines the rationales behind these two decisions: the Swiss court’s assessment in the M&M controversy rests on what each brands’ chocolate treats look like unwrapped, while the KitKat decision insists that trademark protection should only be afforded based on outside packaging because that is how consumers identify brands. Although reached by different courts, these disparate decisions shed light on the idea that trademark law is certainly an inconsistent art. Only time will tell whether Mars adapts its products to Mondolez’ specifications or whether Nestle will appeal its decision to seek exclusivity over the four-fingered chocolate bar.
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[1] See generally Sweden bans M&M’s logo in trademark battle, BBC News (June 8, 2016), http://www.bbc.com/news/business-36484245; see generally Graham Ruddick, Nestle loses high court battle to trademark shape of KitKat, The Guardian (January 20, 2016), https://www.theguardian.com/business/2016/jan/20/kitkat-nestle-loses-high-court-bid-trademark-shape.
[2] Hazel Sheffield, KitKat setback after UK High Court rules against Nestle’s four-finger bar trademark, Independent (January 20, 2016), http://www.independent.co.uk/news/business/news/kitkat-nestle-cadbury-trademark-setback-after-uk-high-court-rules-a6822641.html.
[3] Graham Ruddick, Nestle loses high court battle to trademark shape of KitKat, The Guardian (January 20, 2016), https://www.theguardian.com/business/2016/jan/20/kitkat-nestle-loses-high-court-bid-trademark-shape.
[4] Graham Ruddick, Nestle loses high court battle to trademark shape of KitKat, The Guardian (January 20, 2016), https://www.theguardian.com/business/2016/jan/20/kitkat-nestle-loses-high-court-bid-trademark-shape; see KitKat TV Commercial, Youtube (April 1, 2016), https://www.youtube.com/watch?v=7ZhArw0p90c (video of KitKat advertisement).
[5] Hazel Sheffield, KitKat setback after UK High Court rules against Nestle’s four-finger bar trademark, Independent (January 20, 2016), http://www.independent.co.uk/news/business/news/kitkat-nestle-cadbury-trademark-setback-after-uk-high-court-rules-a6822641.html.
[6] Damien Sharkov, Sweden Bans M&M’s in Marabou Trademark Dispute, Newsweek (June 9, 2016), http://www.newsweek.com/sweden-bans-mms-marabou-trademark-dispute-468260.
[7] Id.
[8] Id.; see generally Sweden bans M&M’s logo in trademark battle, BBC News (June 8, 2016), http://www.bbc.com/news/business-36484245.
[9] Damien Sharkov, Sweden Bans M&M’s in Marabou Trademark Dispute, Newsweek (June 9, 2016), http://www.newsweek.com/sweden-bans-mms-marabou-trademark-dispute-468260.
