EUIPO told to re-examine Nestlé’s 3D KitKat shape

The Court of Justice of the European Union (CJEU) today ordered the European Union Intellectual Property Office (EUIPO) to reconsider whether Nestlé’s 3D four-finger KitKat shape can be registered as an EU trademark.  

Nestlé applied to register the 3D design at the EUIPO in 2002. The mark was registered in 2006 for goods including sweets, bakery products, pastries, biscuits, cakes and waffles.

However, Mondelēz UK (then known as Cadbury Schweppes) filed an application to declare the trademark invalid the following year, in 2007.

The EUIPO rejected this application, on the grounds that the mark had gained distinctive character through its use in the EU.

Upon appeal from Mondelēz, the EU General Court annulled the EUIPO’s decision. The court said that Nestlé had not established distinctive character for the mark in all of the EU. In particular, Nestlé did not provide evidence for Belgium, Ireland, Greece and Portugal.

All parties appealed against this decision at the CJEU, with Nestlé’s and the EUIPO’s appeal combined.

Mondelēz complained that the General Court wrongly found that the mark had acquired distinctive character in ten countries including Denmark, Spain and Germany, while Nestlé and the EUIPO said the court was wrong to say that a trademark owner has to prove that a mark has acquired distinctive character through use in each of the member states separately.

Today, the CJEU dismissed both appeals.

Mondelēz's appeal was dismissed as inadmissible “as it does not seek to have the operative part of the judgment under appeal set aside, but only requests that certain grounds of that judgment be amended”.

Second, on the joint appeal by Nestlé and the EUIPO, the CJEU said that in registering a mark that was formerly devoid of distinctive character, it is not necessary to submit evidence of the mark having acquired distinctive character through use in each individual member state.

However, the court added that the evidence “must be capable of establishing such acquisition throughout the member states of the EU in which that mark was devoid of inherent distinctive character,” according to a press release.

“Therefore, the court upholds the General Court’s judgment in which the latter held that the acquisition of distinctive character by a mark that was initially devoid of inherent distinctive character must be shown throughout the EU, and not only in a substantial part of the territory of the EU,” the release added.

According to the CJEU, the General Court was right to annul the EUIPO’s decision based on the fact that no evidence was provided on the 3D mark’s distinctive character in Belgium, Ireland, Greece and Portugal.

Today’s judgment is in line with an advocate-general (AG)’s opinion in the case.

Earlier this year, AG Melchior Wathelet suggested that the EUIPO should re-examine whether Nestlé’s 3D mark can be maintained as a trademark.

Wathelet also agreed with the General Court’s decision that the distinctive character of the mark should be proved in each member state and that Mondelēz's appeal should be dismissed.

Tania Clark, partner at Withers & Rogers, said: “This dispute demonstrates the lengths that brand owners will go to in order to protect the shape of their products and prevent competitors from copying them. While this protection can be difficult to achieve, they are unlikely to stop trying.”