No breaks for Nestlé – “4 Fingered” Kit Kat found not to be distinctive by CJEU Adviser

In light of the opinion delivered from Advocate General Melchior Wathelet, Nestlé is facing up to losing its EU trademark for Kit Kat due to lack of acquired distinctiveness across the EU.

Facts

  • This decision is the latest development of the legal battle between Nestlé and Cadbury and subsequently Cadbury’s new owner Mondelez.UK Holdings & Services Limited.
  • To recap, Nestlé applied in 2002 for European trademark protection of the three-dimensional shape of the “four fingered Kit Kat”, which was granted by the European Intellectual Property Office (EUIPO).
  • Cadbury filed an application seeking a declaration of validity, this was initially accepted by the cancellation division of the EUIPO, but on appeal their challenge was rejected by the second board of appeal of the EUIPO.
  • This was appealed before the EU General Court Registry in 2013 and the General Court annulled the EUIPO’s decision on the basis that the distinctive character through use in the European Union has only been proven for a part of the territory of the EU.
  • The EUIPO and Nestlé then appealed the decision on the basis that the General Court had infringed Regulation No 207/2009 by considering that the proprietor of an EU mark must show that the trademark has acquired a distinctive character through use in each member state separately.
  • The AG however found that Nestlé’s appeal should be dismissed

 

The reasoning behind the AG decision was as follows:

  1. Whilst Nestlé provided market research for the majority of the members states, it can be seen that the information provided for Greece, Belgium, Ireland and Portugal was not sufficient to establish that the relevant public in those countries identified Nestlé as the commercial origin of the four fingered Kit Kat,
  2. The General court did not examine whether, with regard to the product covered by the trademark at issue, the acquisition of a distinctive character through use in those 5 member states could be extrapolated on the basis of the evidence provided for the other national or regional markets and Nestlé had not included evidence in the file that the evidence from the other member states could be extrapolated to the other 5 member states and therefore prove the distinctive character.
  3. Nestlé had not established in respect of the product, the comparability of the Belgian, Irish, Greek, Luxembourg and Portuguese markets with some of the other national markets for which it had provided sufficient evidence, therefore the General Court had no option but to annul the decision of the EUIPO.

Lesson to be Learned

  • Establishing distinctiveness of a 3d shape is still a high hurdle to overcome
  • Carefully consider the evidence that you will provide in order to prove the distinctiveness
  • If it is possible to extrapolate evidence for comparability from similar markets, then this should be expressly referred to.

If you have any queries regarding trademarks, please get in touch with Alison Marshall and Sophie Graham in our corporate team.