In the long running dispute between Nestlé and Cadbury (Mondelez International), the General Court of the EU has ruled that the EUIPO (European Intellectual Property Office) must reconsider the now (in)famous registration of the 3D four finger KitKat shape.
A short recap
In 2002, Nestle applied to register a mark at the European Union trade marks office under Application No. 002635229 for “Chocolate, chocolate products, confectionery, sweets; candy; bakery products; pastries; biscuits; cakes and waffles” in Class 30.
At the time that the application was made, the European Union only had 15 member states unlike the current 28.
In 2006, after filing evidence of acquired distinctiveness and appealing the office’s initial objection, the second Board of Appeal held that the mark was not distinctive in relation to “chocolate, chocolate products, confectionery or candy” but could be registered in relation to “sweets; bakery products; pastries; biscuits; cakes and waffles”.
In 2007, Cadbury filed a Declaration of Invalidity against the registration on the basis that it was devoid of any distinctive character, it was descriptive and the mark consisted of a shape necessary to obtain a technical function. In 2011, the office found that the registration was invalid in its entirety. Nestlé appealed this decision.
In 2012, the Second Board of Appeal upheld the appeal and annulled the Cancellation Division’s decision on the basis that the shape of the mark did not respond to a technical need or a technical function, nor was it essential to the shape of the goods at hand.
In 2013, Cadbury (now Mondelez) sought to appeal the decision before the General Court (GC).
Decision of the General Court
In a judgement handed down in Luxembourg on 15 December 2016, and nearly ten years after first trying to invalidate the mark, Mondelez has got the decision it wanted. The General Court annulled the decision of the Second Board of Appeal and ordered the EUIPO to pay the costs incurred by Mondelez.
The GC stated that none of the original evidence taken into consideration by the EUIPO establishes use of the mark in respect of “bakery products, pastries, cakes and waffles”. Furthermore, although it was established that the mark had acquired distinctive character through use in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the United Kingdom, the Board of Appeal could not validly conclude that the mark had acquired distinctive character in Belgium, Ireland, Greece and Portugal. The Court concluded that the distinctive character acquired through use of that trade mark must be proven in all the EU member States concerned.
Going forward, companies finding themselves in a similar situation should perhaps consider filing shape trade mark applications nationally, rather than as a unitary European Union trade mark. The clear advantage of national applications is that you are only required to prove acquired distinctive character in that country, rather than all 28 EU member states. Nestlé may choose to follow this route to trade mark protection, however, it will not be successful in the UK, as that mark has already been heard before the UK High Court.
It is envisaged that Nestlé will appeal this decision to the Court of Justice of the European Union before the deadline of 16 February 2017.