Why you can trademark a Toblerone but not a KitKat

In 1777, William Bass founded a brewery in Burton-on-Trent, in the middle of England, that was to become one of the world’s biggest beer companies by the end of the 19th century.

Bass beer was instantly recognisable by the red triangle emblazoned on its bottles.

“It is no extravagant assertion to say that throughout the world there is no name more familiar than that of Bass,” says a passage in Fortunes Made in Business, a book written by “Various Authors” published in 1884. “There is no geometrical figure so well known as the vermilion triangle which is the trademark on his [Mr Bass’s] bottles. It is as familiar to the eye as Her Majesty’s visage on the postage stamps.”

Anxious to stop others imitating the red triangle design, Bass acted quickly when the Trade Mark Registration Act was passed in 1875.

Having spent New Year’s Eve outside the registrar’s office, a Bass employee was first in line when applications for trademark registration opened on January 1, 1876, making the red triangle the UK’s oldest trademark.

The value of a trademark lies in its longevity. This is in contrast to patents, which are for new inventions that are capable of industrial application. Their exclusivity in the UK for example expires after a maximum of 20 years, to encourage competition among manufacturers.

A trademark however “can be renewed every five, 10 years, depending on your jurisdiction, ad infinitum, which gives you quite a monopoly,” says Kate Swaine, partner at law firm Gowling WLG. That monopoly has so far lasted 141 years in the case of the Bass red triangle.

A string of failed attempts by consumer goods companies to trademark shapes and colours have highlighted both the complexities of intellectual property law and the value to brands of at least seeking the virtual monopoly of trademark protection.

As Mary Bagnall, a partner at law firm Charles Russell Speechlys, explains, trademarks are usually “logos or names registered in relation to specific goods or services, so you can have businesses with the same name but operating in different spaces, such as Polo for Ralph Lauren clothing, for Volkswagen cars and for Nestlé’s mint with a hole”.

The Apple trademark coexisted quite happily as The Beatles’ record label and as the computer business but the two companies become embroiled in a legal fight after these once-distinct areas converged with changes in technology including the rise of digital music.

To qualify for registration, trademarks have to be distinctive, the most uncontroversial being invented names, such as Kodak.

It is trickier to trademark shapes and colours. Lindt failed in Germany to trademark its gold-foiled chocolate bunny. Rubik lost a bid to win EU trademark protection for its eponymous cube puzzle. Last month Nestlé was unable to replicate in the UK its success elsewhere in trademarking the shape of its KitKat four-fingered chocolate wafer.

Christian Louboutin, the shoe designer, has also been successful in some countries in trademarking the signature red colour of his soles.

For companies that invest heavily in their brands, a trademark makes it easier and cheaper to prevent copycat imitations, though the English law of Passing Off can still be used to protect unregistered trademarks.

Nestlé was thwarted in its attempts to trademark the KitKat shape after a ‘judge in the UK’s Court of Appeal last month ruled that the rectangular bars with breaking grooves was not distinctive enough.

The Swiss group said: “We will explore other avenues to protect our famous KitKat® 4-finger shape.”

Yet Toblerone, the bar belonging to US chocolate rival Mondelez, does have a trademark for its triangular shape. Coca-Cola also managed to trademark its fluted, curvy glass bottle in 1980, but failed with a more recent design. Why the difference?

Both the Toblerone shape and the original Coca-Cola bottle were central to the groups’ advertising, says Ms Bagnall. Toblerone’s advertisements talked about using triangular honey from triangular bees and Coca-Cola featured its bottle so prominently in its ads that people were able to identify it as a Coke bottle without labelling.

Gowling’s Ms Swaine says: “Coca-Cola was able to show what Nestlé couldn’t — the bottle itself was distinctive. Moreover when you buy Coca-Cola, you see the bottle but when you buy a KitKat, you don’t see the bar — it’s in a wrapper.”

Mondelez recently changed the design of Toblerone in the UK, putting bigger gaps between the triangular shapes to reduce the weight of one of its most popular bars from 170g to 150g in order to reduce costs after the pound’s Brexit-induced drop.

Could this change jeopardise its UK trademark? Mondelez emphasised that the new bar: “Is only available in the UK and sold at a limited few UK retailers . . . While we retained the overall length, we increased the gaps between the iconic triangles on this specific bar alone. We want to be clear that this design change is not affecting the full range.”

Though some of these distinctions may appear to be fine, Ms Bagnall says there is one clear principle when it comes to trademarks. “It’s anti-competitive for trademarks to be used as a means of extending protection of other intellectual property rights . . . for example, by getting a patent or registered design and then trying to extend the monopoly by getting a trademark,” she says.

Bass is no longer an independent British brewer. But its owner, Anheuser-Busch InBev, the Belgian-Brazilian beer group, decided in 2013 to change the name of Bass Pale Ale to Bass Trademark No. 1 and “celebrate the brand’s place in history as the first registered trademark in the UK”.

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