What KitKat and Rubik’s Cube have in Common

Author: Marsha S. Cadogan, MSC Intellectual Property and Technology Law

Let’s talk about trademark disputes in the European Union. Is KitKat’s chocolate shape a trademark? How about the Rubik’s Cube? Not in the European Union (EU). These two particular disputes could happen in Canada, especially since three-dimensional signs are registrable under our Trademarks Act.

Who may find this information useful: Existing and potential owners of trademarks who do business in the EU. This is also useful general knowledge for trademark rights holders, whether or not you do business in overseas markets.

KitKat and Rubik’s cube were both registered trademarks under the EU Community Trademark Act. Both were registered as three dimensional signs. The signs were successfully challenged (Kitkat, in 2018 and Rubik’s Cube in 2019), which means that these shapes are no longer valid trademarks in the European Union.

Background

A little background to this is helpful. The contoured shape of KitKat’s chocolate was registered as a three-dimensional sign by Nestle in the EU intellectual property office in 2002. The mark was challenged by Mondelez (formerly Cadbury Holdings) in 2007. Mondelez claimed that there was nothing inherently distinctive about the KitKat’s shape, to warrant it to be registered and used as trademark.

What happened

The sign was declared as invalid by the EU intellectual property office and cancelled, but later reinstated on an appeal to the court (General Court). After a few years of appeals from both sides, the case went to the European Court of Justice, who decided that KitKat’s shape is not distinctive as a trademark in all EU territories. Since KitKat has not acquired distinctiveness (in its shape, since that was the basis of the registration) with consumers in all territories of the EU, the case to invalidate the trademark was met.

Important: There was nothing inherently different about the chocolate’s shape. In most jurisdictions around the world, if your trademark is not inherently distinctive, but found to acquired distinctiveness through use, it can still be registered and may withstand invalidity claims. So what is acquired distinctiveness through use? This involves the consumer knowing your product, and having no difficulty differentiating your product from others because they know what makes your product stand out. KitKat could not prove that it had acquired distinctiveness in all EU countries. This affected their pleadings.

Where’s the sign? Rubik’s Cube

The challenge to Rubik’s Cube trademark was different, but led to the same result – the finding that the trademark was no longer valid. Rubik’s Cube was registered as a three-dimensional sign in 1996. The applicant, Seven Toys, submitted three black and white drawing to represent three different angles of the Rubik’s Cube. It was registered under the Nice Classification System as a “three-dimensional puzzle”. No additional description of the sign was provided, such as to say that it has a rotating capability etc., no color trademark was claimed either. Simba Toys initiated a challenge against the trademark, on the basis that the three-dimensional sign should not have been registered because it is exclusively made up of a shape that is a result of the nature of the toy. This is a statutory challenge under EU’s Community Trademark Act. The sign was also challenged on the statutory ground that the shape was necessary to obtain Rubik’s Cube technical result. Specifically, the black lines which divide each cube, is a necessary part of the rotational capability of the toy, and therefore enabled the technical result (that is, how the the cube is designed to facilitate its function). The court ruled that there was nothing different or distinct about Rubik’s Cube’s trademark from the product itself and especially, how it works. The technical result was a substantial part of the three-dimensional sign. Therefore, the trademark was declared as invalid. This decision is currently under appeal.

In Canada, three- dimensional signs that represent the shaping of goods or containers are registrable as “distinguishing guises”. However, such registration is only possible if the sign is used in Canada, and has acquired distinctiveness as of the date of filing of the trademark application.


This post is for informational purposes only and is not meant to be legal advise. For legal advise on protecting three-dimensional signs, contact Marsha at marsha@marshacadoganip.com