Battle in court over shape of choc bars

Appeals court reserves judgment after hearing case of Kit Kat maker Nestle and Petra Foods

Nestle's Kit Kat chocolate bar and Petra Foods' Take-it chocolate wafer.
Nestle's Kit Kat chocolate bar and Petra Foods' Take-it chocolate wafer.ST PHOTO: DESMOND FOO

Have a break, goes the advertising slogan for a popular confection.

But no breaks were given yesterday as two of Singapore's top lawyers crossed swords over the shape of chocolate bars.

Senior Counsel Alvin Yeo represented Swiss food and beverage giant Nestle, maker of Kit Kat, the iconic chocolate-covered wafer fingers that have been sold for five decades.

Senior Counsel Davinder Singh represented local manufacturer Petra Foods, which moulds chocolate wafer fingers marketed under the name Take-It.

Nestle was appealing against a High Court decision to throw out its intellectual property (IP) rights suit against Petra last year over the shape of Take-It bars.

The issue before the court is whether a trader can stop others from marketing goods of a similar shape by claiming intellectual property rights in the shapes of the products themselves.

In this case, the shapes come in two- or four-finger configurations.

A five-judge Court of Appeal, convened to hear selected cases of jurisprudential significance, reserved judgment after hearing nearly five hours of arguments.

Besides the litigation heavyweights on both sides, National University of Singapore law professor Ng-Loy Wee Loon, appointed amicus curiae (Latin for friend of the court) to give an independent view, also weighed in on the legal tests to be applied.

Nestle had registered the shape of the four-finger and two-finger Kit Kat bars as trademarks.

The marks were invalidated by the High Court when it dismissed Nestle's suit against Petra, which was represented by Mr Dedar Singh Gill in earlier proceedings.

Nestle's case is that the physical form of the Kit Kat bar should be a trademark as it had a distinctive character associated with the company. Yesterday, Mr Yeo argued that in the eyes of the average consumer, the shape was distinctive enough to tell consumers exactly who had made the product.

But Mr Singh argued that there was no evidence that the shape of Kit Kat bars was designed to make it distinctive. He added that advertisements focused on the name Kit Kat, not the bars themselves.

The High Court had found that the slab shape was necessary for efficient mass production and the grooves facilitated the breaking of the chocolate.

To preserve market competition, shapes with features incorporating functional characteristics or technical solutions cannot be granted trademark protection, the court held.

A decision will be made at a later date.

A version of this article appeared in the print edition of The Straits Times on August 01, 2015, with the headline 'Battle in court over shape of choc bars'. Print Edition | Subscribe