Patents & Trade Marks

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Focus: Registrability of a chocolate shape

7 October 2008

In brief: A recent Australian Trade Marks Office decision found that the evidence did not demonstrate use as a trade mark of the shape of a four-bar chocolate (the well-known 'Kit-Kat' bar) and consequently, registration for that shape was refused. Partner Andrew Butler and Senior Associate Garen Holopikian review the case.

How does it affect you?

  • Evidence presented in support of the registrability of a trade mark, such as a shape trade mark, must show that the shape in question is being used as a trade mark.
  • Difficulties could arise in an application to register a shape if the shape is invisible when the goods are sold, and where the manner of advertising emphasises the functional aspects of the shape.

The facts of the case and the decision

Nestle applied for and secured acceptance of a trade mark described in the following terms – 'the trade mark consists of the shape of the goods, being four bars attached to one another by a thin base as depicted in the representations attached to the application form'. The goods proposed for registration were 'chocolate confectionery being chocolate coated confectionery blocks or bars and chocolate coated wafer biscuits'.

Aldi opposed registration of the application.1

At the hearing, the representatives of Aldi stressed as grounds of opposition sections 41, 59, 58 and 62 of the Trade Marks Act 1995 (Cth) (the Act). The Hearing Officer decided the opposition on the basis of section 41 of the Act.

The Hearing Officer commented that '...strongly evident throughout the first two grounds is a solid thread that I will summarise as "this is not a trade mark at all, it is a functional shape of the goods, one which the applicant does not use as a trade mark but is attempting to disguise as one for the purposes of this exercise"'.

The Hearing Officer considered that 'The shape's convenient breakability is plain' and that 'The practical advantages of being able to neatly break a piece of what would otherwise be a solid block of potentially crumbly wafer material into a convenient chocolate-coated portions are obvious'.

The Hearing Officer decided that the shape applied for was not inherently adapted to distinguish the applicant's confectionery and, therefore, s41(6) of the Act applied.

As to whether evidence of use of the shape was use as a trade mark, the Hearing Officer referred to the case of Woolworths Ltd v BP Plc (No 2) (2006) 70 IPR 25, in which the court dealt with a colour mark. The Hearing Officer considered that the principles outlined in that case were equally applicable to a mark that is a shape. The court, for the purposes of applying s41(6) to a colour mark, specified two issues as follows.

'... The first is whether the use of the colour in the manner described in the application has, prior to the date of the application, constituted use of the colour as a trade mark. The second issue is whether the trade mark applied for does in fact distinguish the applicant's products, having regard to evidence concerning the actual use of the colour as a trade mark ....'.

The Hearing Officer took the view on the evidence that '... the public is not being educated to see the 4-bar shape as a trade mark, but to see that the product may readily and conveniently be snapped into either single or 2-bar portions ...'. The Hearing Officer was not convinced on the evidence that the shape has been used as a trade mark.


In concluding that the shape is not capable of distinguishing the applicant's products from those of others, the Hearing Officer made specific mention of the invisibility of the shape when the goods are sold, and the functional aspects of the shape being emphasised in advertising.

The decision has been appealed and we will report further when the appeal is decided.

  1. Aldi Stores (a limited partnership) v Societe Des Produits Nestle S.A. [2008] ATMO 76 of 27/8/08.

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