Monthly Archives: July 2018

KitKats may have been helping people take breaks since 1935, but the European Court of Appeal would not give Nestlé a break as they refused to register as a trademark the 3D shape of the chocolate bar. The arguably iconic four-fingered shape of the KitKat underpins their tear and snap ad campaigns which have seen stars such as Jason Statham slice through the foil and snap off a finger. Nonetheless, the ‘four trapezoidal bars aligned on a rectangular base’ as it was snappily put, can be recreated by other confectioners.The Court held that, although the shape of the KitKat bar is well known, most consumers would not recognise the four-finger chocolate bar without the KitKat logo or packaging and that the consumer is more likely to be influenced by the brand name on the bar and the wrapper than solely the shape.Nestlé has spent over a decade fighting the trademark dispute, which the likes of Cadbury have opposed. The shape is protected in Australia, Canada and South Africa, and following four years of back-and-forth was registered as a trademark in the EU until rivals opposed the registration. In 2007, the case came to court, and this week’s decision saw Nestlé’s appeal thrown out and the EU Trademark office ordered to reconsider its decision, annulling KitKat’s claim.The mark is now in the hands of the EU Trademark office and it is likely that it will be removed from the register for now, as there is not sufficient evidence that the shape is distinctive across all EU member states.  This leaves scope for own-brand imitations, and allows less well known, identical bars such as Norway’s Kvikk Lunsk to continue production.The bar, four-fingers or not, has been set high in regards registering trademarks for 3D shapes. The Court has reiterated the need for distinctiveness in the shape alone, and not when considered with a logo and other branding.The KitKat case has shown that consumer awareness and knowledge and association of a shape with a brand is not enough for the Court to consider registering a 3D shape as trademark, and brands will have to show that their shape is distinct in order to stand a chance of registration.  

After England spectacularly shot their way into the quarter finals this week, some of the players are likely to be eagerly awaiting cashing in on the success of the celebrations.England player Jesse Lingard applied for four trademarks with the UK Intellectual Property Office in the weeks leading up to the 2018 World Cup. These include one for the image of his goal celebration, in which he peers through the middle of his hands making the shape of his initials and three featuring his nickname ‘JLingz’. The trademarks themselves only include replication on clothing, footwear and headgear and not the performance itself. Therefore, should another aptly named player attempt his characteristic gesture, he would have no claim against them.Lingard’s pre-emptive application followed the likes of Gareth Bale who trademarked his famous ‘11 of Hearts’ celebration to use as a logo on a clothing brand, David Beckham who has trademarks such as ‘DB07’, ‘DB23’ and ‘BECKHAM’ and Christiano Ronaldo who trademarked ‘CR7’. Quit whilst you’re winning Players should however, be careful, as The International Football Association Board’s Law of the Game includes rules in regards to celebrations and provides that a player must be cautioned for certain acts. This includes excessive and/or choreographed celebrations, leaving the field, covering the head or face, provocative gestures, and also includes political, religious, advertising or personal slogans, statements or images. However, FIFA appears reluctant to reprimand players for celebrations under these rules.In the World Cup Qualifiers Australia’s Captain Tim Cahill, as he scored in the 109th minute in extra time against Syria, celebrated by pretending to be an airplane before making a T sign with his arms in reference to ‘TripADeal’, a travel company he had signed a promotion deal with. The celebration was followed up by a post on Instagram by the company and a tag by Cahill on his own page. Tim received no caution during the match, presumably because the referee was not wise to his subtle advertisement, but was arguably in breach of a number of the ‘Laws of the Game’, including Law 4 para 5 against advertising.This action led to some calls for changes to the rules to avoid referees being required to have knowledge of the player’s promotional endeavours in order to caution them during the game.The World Cup 2018 has also seen Columbia’s choreographed routine, Antoine Griezamann’s Fortnite celebration and a player from Belgium kick himself in the face. Further, Swiss players Xhaka and Shaqiri, both of Albanian heritage, celebrated in their match against Serbia by making a ‘double eagle’ gesture, which denotes a nationalist symbol associated with the Albanian Flag. Some considered that this celebration was an attempt to provoke the Serbian fans. FIFA opened proceedings against the pair under Article 54 of their Disciplinary Code, which provides that anyone who provokes the general public during a match will be suspended and fined, but concluded that neither had infringed with unsporting behaviour.  Whether they’re building a personal brand, making a statement, or simply having some fun, it is safe to say we will not get bored of imaginative celebrations, especially if they are coming after our team’s winning goals.