Kit Kat copy, right?

When is Greek yoghurt Greek yoghurt? Should a Kit Kat be trademark protected? It was all up for debate in the courts in January.

Kit Kat versus Cadbury? We’re not asking for your favourite snack, but referring to yet another legal battle over whether the quintessential British snack should be protected from imitation.

What about Greek yoghurt? When is Greek yoghurt actually Greek? Do you even care? Manufacturer Fage UK does, enough to splash out on two top-level silks to defend its copyright at the Court of Appeal (CoA).

International food manufacturers are willing spend big to protect their products. After all when a product like Kit Kat generates revenues of about £40m annually, it’s worth splashing out to protect the income stream.

Turning sour

The legal fights between Cadbury and Nestlé are anything but sweet.

It has only been a few months since Nestlé blocked Cadbury’s attempt at trademarking the iconic purple colour (Pantone 2865c) of its Dairy Milk bars through the courts (21 November 2013), but the warring companies are back in court again. This time around they are battling over that iconic British snack – the Kit Kat.

Is it actually possible to trademark a four-finger chocolate treat? 

3 New Square’s Simon Thorley QC was in court arguing that the bar, which earned Nestlé £40m a year between 2008 and 2010, should indeed be protected from imitation. CMS Cameron McKenna partner Tom Scourfield instructed Thorley for the food giant.

Cadburys brought in its own IP heavyweight to counter the suggestion, 11 South Square’s Iain Purvis QC, who was instructed by Bristows partner Paul Walsh.

It may all sound familiar. It has been a year since Kit Kat owner Nestlé got a European-wide ruling from the board of appeal at the Community Trade Mark Office, reinstating a trademark that stopped rival companies from producing similar products.

This bout of litigation looks specifically at under what circumstances a trader can secure a monopoly in the shape of a product by registering it as a trademark.

Confused? Mr Justice Arnold refused to answer the questions, sending the case back to the European court for discussion.

Greek conundrum 

Meanwhile, it has been almost a year since the High Court told us that Greek yoghurt could only be deemed Greek if it its thick and creamy texture appears predominantly to have been attributable to the methods of straining – and with no additives (3 April 2013).

In a bid to protect its dominance in the UK Greek yoghurt market, Fage UK (which, until 2012, was responsible for 95 per cent of yoghurt sales in the UK) had attempted to block the entry of a New York rival into the UK market.

That rival, Chobani UK, was not producing what was legally known as ‘Greek yoghurt’, Fage contended. It should be prevented by the court from introducing an imitation product on supermarket shelves.

Winston & Strawn partner Richard Price has led the battle for Fage, winning an injunction against Chobani in December 2012. The following March Mr Justice Briggs accepted Fage’s extended passing-off claim against its rival and granted it a permanent injunction against Chobani. He also refused Chobani a counterclaim for alleged trade libel.

For the CoA Fage UK was taking no chances. 8 New Square’s Daniel Alexander QC was joined in the counsel team by Brick Court Chambers’ Mark Hoskins QC.

The pair faced One Essex Court’s Geoffrey Hobbs QC and 8 New Square’s John Baldwin QC, who were instructed by Pillsbury Winthrop Shaw Pitman partner James Tumbridge. 

The CoA upheld the decision of the High Court, granting the permanent injunction against Chobani and ordering the respondent to pay Fage’s appeal costs. This included a £350,000 down payment to be paid on account to the court shortly.

Lord Justices Longmore, Lewison and Kitchin were emphatic in determining that Greek yoghurt could only be deemed Greek if it is made in Greece and made by a straining process so as to remove the watery whey and should contain no additives,

The ruling, said Winston & Strawn, would ensure that British shoppers were not duped into buying Greek yoghurt that was not, in fact Greek.

It is all heavy work for those Lord Justices. Take our advice. Have a break, have an, erm, Kit Kat.