The Crisis of Kitkat, Milky Way, Hershey's



The Milky way Crisis

Franklin Clarence Mars, the owner of Mars Confectionery Company an American Company carrying their business as manufacturing of confectionery items such as ice creams and chocolates, some famous chocolates such as Mars, Galaxy, Snickers, Milky way and etc. The name Milky Way was launched in 1923. His popular Milkshake named “Malted Milk” was very popular in the late 1800s. The taste of that Milk Shake was very synonymous and basically, it was known for health qualities, in the late 1800s, they began to be used flavour creamy milkshakes for adults and kids. The Milky Way was introduced in 1925 in the market, which was around in weight 3 ounces which were more or double from the Hershey bars. Frank and his son Forest both were handled their business, in 1932 forest headed to England to create a name for himself in the confectionery business. In Europe, the bar is basically known for Mars Bar and not for Milky Way and it is not only the name that differentiates but also it's filling which differentiated enough.

Case Study

  1. In the case of Mars Incorporated V. A.K. Gera and Ors.1 The plaintiff, Mars Incorporation has applied in class 30 for registration of the trademark Milky Way in 1994. It is contended that the trademark Milky Way was first adopted by the plaintiff in 1923 and they use such trademark in respect of ice creams in the year 1989. The Milky Way is registered in more than 160 countries all over the world. The product is easily available in New Delhi and other parts of India. In 1999, the plaintiff's attention was drawn to the appearance of toffees under the trademark Milky Way, in the Delhi markets. The plaintiff immediately initiated the investigation which resulted that the said product was manufactured and sold by the defendants. It is stated that the impugned mark used by the defendants is a fraud who is marking a misrepresentation that their goods are somehow connected with the plaintiff goods. It is further stated that the impugned mark Milky Way used by the defendants was likely to dilute the distinctive character of the plaintiff’s trademark “Milky Way”. Such use of Impugned Mark by the defendants caused the reputation and goodwill of the plaintiff and an order of injunction is the only efficacious remedy for it. The plaintiff filed an affidavit by way of evidence and annexed various Exhibits along with it.

  1. According to the document's the Court seemed that the plaintiff is the registered proprietor of the trademark Milky Way in respect of chocolates and confectionery items in India. It also seemed that the trademark Milky Way was not only registered in India but in 160 other countries. The plaintiff trademark Milky Way had acquired a reputation and goodwill in the Delhi markets. It also seemed that the use of the trademark Milky Way by the defendants was an identical trademark which amounted infringement of plaintiff’s registered trademark. Further, the use of such trademarks by the defendants created confusion among the peoples. Further, the use of such trademark is visually, structurally and phonetically identical to the plaintiff’s registered trademark for edible goods that are not made under the strict quality control and highest standards of hygiene of plaintiff and this lead to undesirable consequences in a matter of reputation and goodwill of the plaintiff. It was held that since the plaintiff was the registered trademark of Milky Way and has a statutory right to protect it by virtue of Section 28 of the Trade and Merchandise Marks Act, 1958, the adoption and use by the defendants are likely not only to hurt public but also caused the reputation and goodwill of the plaintiff.


The dispute over shape is complex in trademark law. The four-fingered wafer crisp was named “Rowntree’s Chocolate Crisp” before 1935, after two years the owner changed its name to “Kitkat Chocolate Crisp”, and after the 2nd world war, its name was again changed to only “Kitkat”. Rowntree was acquired by Nestle in 1988. Kitkat is hugely popular in Europe, North America and Asia.

  1. The story begins when Nestle filed an application in 2002 for registration of its 3D Kitkat four-fingered sign with the European Union Intellectual Property Office (hereinafter referred to as EUIPO) as a union trademark. After 4 years means in 2006 Nestle got registered in EUIPO for its 3D four-fingered KitKat. Nestle contended that the KitKat shape is unique and should be protected by the law. The problems begin when its Rival Mondelez Company of Cadbury filed an application in EUIPO for the invalidity of 3D four-fingered KitKat. However, EUIPO rejected the application and give reasoning on the same by stating that the mark was distinctive within the union. Mondelez went to the European Court of Justice and demanded the invalidity of the EUIPO ruling. In 2016, the European Court of Justice (hereinafter referred to as ECJ) ruled that the decision of EUIPO was invalid and incorrect and stated that the distinctive character of the trademark was demonstrated only part of the territory of the Union and not the whole, particularly in member states such as Belgium, Greece, Portugal and etc. afterward Nestle was unsatisfied with the verdict of the ECJ and appealed the decision of the Court and argued that the requirement that a mark needs to be a distinctive all of the EU states is incompatible and are not necessary to prove the distinctive character of each member state. Thereafter the matter was referred to Advocate Genera of the ECJ which said that there are national and regional markets as well, he said that the evidence provided for the regional or national market can be sufficient to cover other markets of the European Union for but unfortunately no evidence has been provided by the Nestle. He concludes that the ruling of the Court was correct and appropriate and dismissed the appeals brought by Nestle. Nestle had acquired the trademark of the Kitkat shape in various other countries but remains exclusive from the European Union.    HERSHEYS TRADEMARK

Hershey was founded in 1894 by Milton Hershey, as the Hershey Chocolate Company. The company was the subsidiary of Lancaster Caramel Company which was founded in 1886. The Hershey Company was one of the leading Chocolate Company in North America after Mars Bars. It was well known in the USA, and both Mars Bar and Hershey Bars were responsible for around 75% of sales in America. Hershey got registered their trademark for the design of its candy bar with the Trademark Trial Appeal Board. Hershey has a number of the registered trademark which included Hershey’s and Hershey’s Kisses. Basically, in this case, Hershey sought protection for the design of the candy bar which had been used for the last 40 years and nor for the word Hershey. This type of trademark protection is called “Trade Dress”. Trade Dress is something that provide protection for both product packaging and product design. The trademark application of Hershey got rejected in the US, according to the US patent and Trademark Office (hereinafter referred to as USPTO), they said that “the flat rectangular shape and scoring of Hershey candy bar into smaller pieces represent functional features which constitute an absolute bar to registration”. It is also recognized that candy bars were available in all sorts of segmented shapes such as squares, rectangles, ovals and etc. The USPTO refused registration to Hershey’s trademark application for its design by giving reasons stating that such design had not established distinctiveness. But TTAB reversed such a decision and considered that Hershey had acquired distinctiveness. It was also considered by TTAB that Hershey had been using the mark for the last 40 years. According to this scenario, Hershey got registered their trademark for the design of its Chocolates.






1 94 (2001) DLT 906