The Kit Kat Trademark Dispute

On 22 April, the IPAB ruled on a trademark dispute between Swiss multinational Societe des Produits Nestle S.A (hereafter Nestle) and Kolkata based Kit Kat Food Products over the use of the trademark 'Kit Kat'. 

Two applications for the registration of the Kit Kat  trademark  in India was made by Nestle in 1987. However, this was oppossed to by Kit Kat Food products. Consequently, the applications could not be registered. In 1991, Kit Kat Food products attempted to register the trademark Kit Kat for their various products including chanachur by filing three applications. However, these applications were rejected because of Nestle's opposition. 

The issue to be decided by the IPAB was essentialy, whether Nestle or Kit Kat Food Products had the right to use the trademark 'Kit Kat' and consequently, whose application could be rightfully rejected under the Trademarks Act, 1999. 

The IPAB noted that Societe des Produits Nestle S.A had been using the 'Kit Kat' trademark outside India since 1935. They had got the mark registered in 1942. The applications filed by Nestle which are at the centre of this dispute have been filed in 1987. The applications had been filed with respect to a number of products which includes cereals, which is used to make the highly popular wafer chocolate, Kit Kat. Although registration does not automatically translate to use, the 1987 application was filed such that it could be used since 1987. The IPAB noted that Nestle had provided evidence in the form of an export sales invoice that they were users since 01/11/1987. It had been conceded by Kit Kat Food Products that they had been using the trademark since 1991 only. Therefore, the IPAB ruled that Nestle was the prior user of the trademark. By establishing that they were the prior user of the trademark, the IPAB noted that Nestle had discharged its burden of proving that any confusion or deception would be a result of the use of the mark by Kit Kat Food Products and not by Nestle as Nestle is the prior user. As a result, the IPAB ruled that the public will identify the Kit Kat trademark with Nestle and not Kit Kat Food Products.

Moreover, the IPAB noted that Kit Kat Food Products was unable to satisfy their burden of proving that they were a prior user of the trademark and that their use of the Kit Kat trademark would not cause any confusion or deception of the common public. Additionally, as the marks are identical, the goods and trade channels similar and especially as the class of customers are more or less the same, in the form of small children, the IPAB noted that there was "every possibility of confusion being caused" because of the use of the mark by Kit Kat Food Products. Therefore, the IPAB ruled that Kit Kat Food Products' adoption of the trademark was not bona fide and that it was merely an attempt on their part to ride on the goodwill of Nestle. Thus, the IPAB held that Nestle's application be accepted as it was the rightful user of the trademark.