KitKat battle rages on: EUIPO must reconsider TM

The European Union Intellectual Property Office (EUIPO) must reconsider the registration of Nestlé’s 3D four-finger KitKat shape, according to the General Court in the latest round of proceedings with Mondelez International.

In 2002, Nestlé applied to the EUIPO to register the 3D shape of the four-finger KitKat. Four years later, the EUIPO agreed to register the mark for sweets, bakery products, pastries, biscuits, cakes, and waffles.

In 2007, Cadbury (now Mondelez) applied to the EUIPO for a declaration of invalidity.

The application was dismissed in 2012, with the EUIPO considering that Nestlé’s mark had acquired distinctive character through use in the EU.

But, in a  press release (pdf) issued today, December 15, the General Court said it has annulled the office’s decision.

First, the court said that if a trademark has been registered for a “category of goods containing several sub-categories”, proof that the mark has been put to “genuine use in relation to a part of those goods affords protection only for the corresponding sub-category or sub-categories”.

None of the evidence that the EUIPO took into consideration establishes use of the trademark in respect of bakery products, pastries, cakes and waffles, said the court.

It added: “Consequently, EUIPO erred in law in considering that the product in question could be included in any of the categories of goods concerned.”

A 3D mark may acquire distinctive character through use, even if used in conjunction with a word/figurative mark.

The court explained that in order for distinctive character to be acquired through use, “the sign applied for must have come to identify the product concerned as originating from a particular undertaking”.

Evidence taken into account by the EUIPO, such as market surveys carried out in ten member states, was capable of establishing an “indication of the commercial origin of the goods”, said the General Court.

Mondelez had asserted that Nestléhadn’t proved distinctive character acquired through use of its mark throughout the EU.

According to the court, distinctive character must be demonstrated in the part of the EU where the mark was devoid of intrinsic distinctive character—in this case, throughout the EU at the date of filing the application, in 2002.

“In the case of a mark which, like Nestlé’s mark, does not have inherent distinctive character throughout the EU, the distinctive character acquired through use of that mark must be shown in all the member states concerned,”said the court.

Although the trademark had acquired distinctive character through use in ten countries, the court said that the EUIPO “could not validly conclude its examination”without coming to a conclusion “regarding the perception of the mark” in other countries and “without analysing the evidence adduced in respect of those member states”.

Now, the EUIPO will need to take another decision in which “it verifies that, at the date of filing the application for registration, the mark in question had acquired distinctive character through the use that Nestléhad made of it in the 15 member states concerned in respect of ‘sweets and biscuits’”.

A spokesperson for Nestlé said: “We are pleased that the court acknowledges that the four-finger shape trademark has acquired distinctiveness in ten member states of the EU.”

They added that the four-finger shape has been used throughout the EU by Nestlé for “decades” and is “known by consumers as being KitKat”.

“At the same time, the judgment sets a high threshold for trademark applicants to register shapes as EU trademarks by requiring evidence of acquired distinctive character in all EU member states. We continue to review the findings and consider our position,” added the spokesperson.

A spokesperson for Mondelez said: “We are naturally pleased by this ruling of the General Court which is in line with our contention that the shape of the KitKat bar should not be protected as a trademark across the EU.”

Iain Connor, partner at Pinsent Masons, said: “The latest KitKat decision brings into sharp focus a number of competing issues with which the General Court is grappling in the context of the tricky questions relating to non-conventional trademarks."

He outlined the three issues as acquired distinctiveness in relation to 3D marks; the validity of surveys as evidence supporting such acquired distinctiveness; and what amounts to evidence applicable throughout the EU.

"We can only hope that the final decisions do not have unintended consequences for trademark law as whole,” said Connor.

Guy Wilmot, partner at Russell-Cooke, said: “It is not surprising that KitKat’s attempt to trademark their four-finger shape has failed.”

According to Wilmot, shapes and colours are notoriously difficult to protect.

"To be protected, a shape/colour has to be strongly associated with a given product/brand even if any packaging, logos or names are ignored.

“This is a difficult test to meet. Although in this case it could be proved that most people associated the four-finger shape with KitKat in the UK, this was not true across the rest of Europe,” he said.

Wilmot added that this isn’t the last chapter in the case, but that it is certainly "a blow to Nestlé”. He expects more brands to capitalise on this decision and make their own chocolate in four-finger shapes.