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What makes a trademark distinctive?

A trademark can be considered to be distinctive for registration if it complies with the following guidelines; the guidelines help with what you can and can’t register as a trademark. A trademark should have unusual qualities or characteristics or the description is unique to a particular service or product.

You may need to carry out intensive preparation and comparison with other trademarks to decide whether your trademark is in fact distinct enough to be recognised as unique to your brand. This helps to secure your trademark as one that can be registered in the legal system and recognised by your direct competitors.

Consider this case, Nestle v Cadbury [2017] EWCA Civ 358 where Kit-Kat was barred from trade mark registration.

Nestle applied to register the shape of the Kit-Kat as a trade mark in the UK. This was opposed by Cadbury who said that the trade mark lacked distinctive character. The Court of Appeal confirmed that the shape of the Kit-Kat bar is not registrable as a trade mark.

Nestle argued that the trade mark had acquired distinctive character through use. High Court found that the trade mark lacked distinctive character and should not be registered.

Is Kit Kat a trademark?

Nestle appealed this decision, however, the Court of Appeal also sided with Cadbury. The shape of the Kit Kat is not distinctive enough because Nestle has never used its shape as a trademark in isolation; the packaging obscures its shape, and Nestle have not used the shape itself to promote or market the product.

This is just one example of the issues that can occur when one is attempting obtain and use registered trademarks.

How distinct do trademarks have to be to obtain registration in the UK?

Shapes can be registered as trademarks, providing they are either:
• inherently distinctive for the relevant goods; or
• they have been used for a long period of time as a trademark.

Nestle failed on both of these grounds because you can’t see the shape of a Kit Kat until you buy and open one!

What is the shape of a Kit Kat Bar of chocolate?

If we consider the case above, think about how many chocolate bars with the shape of Kit Kat are in the market for sale in the UK. Surely, chocolate bars from other countries imported into the UK would also have this issue. How would this affect the economy and fair competition. Finally, what else could Nestle have done to make their logo or brand more distinctive at that time to prevent the challenges it faced? Let me know your thoughts please.

Is your trademark distinctive?

The above case study example of how thorough research on the logo or brand feature you present to the competition is really necessary. You can find out what you can and can’t register before you start preparing your brand.

In order to avoid unnecessary legal challenges, trademark lawyers can help and save you time when you are considering to submit and pay to apply online.

A trademark lawyer can help you reduce the risk of your application being rejected first time, saving you from re-applying online. So, probably best to consult with a trademark lawyer for long-term satisfaction and peace of mind. Finest Law

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