The European Court of Justice has today dismissed an appeal brought by the owners of KIT KAT (Nestle) for protection of its three-dimensional ‘4 Finger KIT KAT’ chocolate bar shape at an EU level.
The KIT KAT shape was originally granted protection by the EU IP Office in 2006, but Nestle has since been fighting an uphill battle to keep its protection after being challenged by Cadbury Schweppes (now Mondelez UK Holdings & Services) on the grounds that the shape was not distinctive.
In originally granting protection of the KIT KAT BAR shape, the EU IP Office took into account evidence produced by Nestle that the shape had acquired distinctive character through use in ten EU member states, being: Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden, and the UK. However (and it seems critically), no evidence had been provided for Belgium, Ireland, Greece, and Portugal. Given this, today’s ruling from the EU’s highest court 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”.
This statement has raised the evidentiary bar (in respect of trade mark proceedings in the EU) to new levels and is set to have an enormous knock-on effect in future cases, where brand owners seek to rely on registering marks based on acquired distinctiveness through use. It is now abundantly clear that evidence must be provided in respect of each EU member state where the mark is devoid of distinctive character.
The result is that the EU's top court has now declared that it's not enough to prove that a product has become iconic in "a significant part" of the EU - it has to be proven across all the markets of the bloc, not just some.