Preview: Dutch cheese and Nestlé KitKat on CJEU’s plate
Tomorrow, the Court of Justice of the European Union (CJEU) will issue a trademark ruling on the KitKat chocolate bar, while an advocate-general (AG) will opine on Dutch cheese.
The AG will offer an opinion on whether copyright protection can extend to the taste of a spreadable cheese product, after the Gerechtshof Arnhem-Leeuwarden (Court of Appeal for Arnhem-Leeuwarden) referred the case (C-310/17) to the CJEU last year.
Willem Hoyng, founding partner at Hoyng Rokh Monegier in Amsterdam, explained that the sensory aspects of the cheese do not qualify for trademark protection because they are an important property of the product itself. As such, the potential to copyright a taste may offer IP owners new protection.
The question referred to the CJEU in the case is novel, according to Jeremy Blum, partner at Bristows in London.
He explained that the dispute stems from Dutch food company Levola Hengelo attempting to protect the taste of its Heks’nkaas product with copyright.
Jeremy Morton, partner at Harbottle & Lewis in London, noted that historically, the Dutch courts have seemed “open to what we might view as slightly bonkers interpretations of copyright”.
For example, he said that the Dutch Supreme Court awarded cosmetics brand Lancôme copyright protection for its Trésor fragrance in 2006.
“However, the Dutch courts have been less willing to support Levola’s flavoursome claims,” Morton said.
Blum said that many companies rely on trade secrets to protect their secret ingredient or formula.
As explained by Morton, currently, original and written-down recipes can be protected by copyright. But the copyright is only infringed when the recipe is reprinted—not by actually making the recipe’s product.
If the CJEU says that there can be copyright protection for the taste of Heks’nkaas, “representatives of a lot of other industries are going to be cheesed off”, Morton said.
Blum argued that taste is a subjective experience incapable of objective expression.
Clarity in the field of copyright is crucial, he said, and “it is difficult to see how a clear, objective legal framework might be devised for taste as a copyright work”.
Will Nestlé catch a break?
Also tomorrow, the long-awaited decision on the fate of Nestlé’s four-finger KitKat trademark will be decided by the CJEU ( C-85/17).
The European Union Intellectual Property Office (EUIPO) registered Nestlé’s 3D mark in 2006 for sweets and biscuits. Cadbury Schweppes (now Mondelez UK) successfully applied to have the mark annulled, but the EUIPO upheld the validity of the trademark in 2012 following Nestlé’s appeal.
On appeal to the General Court, Mondelez claimed the mark had not acquired distinctive character in the whole of the EU. The General Court agreed, and in 2016 ordered the EUIPO to reconsider the registration in light of this.
All parties appealed against the decision.
Nestlé and the EUIPO argued that the General Court erred in finding that a mark’s distinctive character must be established in all member states covered by the mark.
Mondelez claimed that a chocolate bar consisting of four trapezoid shaped fingers cannot be classified as a sweet or biscuit.
Earlier this year, AG Melchior Wathelet suggested that the EUIPO should re-examine whether the four-finger shape can be maintained as a trademark.
Wathelet considered Mondelez’s appeal to be “manifestly inadmissible” and said it must be dismissed. He said the statute of the CJEU provides that an appeal may be brought by “any party which has been unsuccessful, in whole or in part, in its submissions”.
He agreed with the General Court that account must be taken of the size and distribution of the regions in which distinctive character had been acquired, but said it would be unreasonable to require proof of distinctive character in each member state.
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