Kit Kat has no distinctive character

The European Court of Justice has remitted to EUIPO the decision as to whether "Kit Kat 4 fingers" is a three-dimensional trademark 1 August 2018

The important decision of the European Union Court of Justice (EUCJ), case number C-95/17 – which will be discussed below – concerns the protection of a three-dimensional European Union trademark for the snack commonly known as "KIT KAT" in its 4 finger version.
The product was originally sold in the United Kingdom in packs with two layers, an inner one of silver paper and an outer one on which was printed the red and white logo in which the words "Kit Kat" appeared. Today the same product is sold in a single-layer pack where the logo appears, which, like the shape of the product – over time – has not undergone any changes that could be considered relevant.

In 2002 Nestlé filed an application for a three-dimensional trademark so as to have recognition of the relative protection on the snack bar called "Kit Kat 4 fingers" which was registered in 2006 in class 30 for "sweets, bakery products, pastry products, biscuits, sweets, wafers".
In 2007 the English company Cadbury (later to become Mondelez) requested the cancellation of the registration, although the request was rejected in 2012 because according to the European Union Intellectual Property Office (EUIPO) the snack covered by the three-dimensional trademark had acquired a distinctive character in the European Union.
Mondelez appealed against this decision and asked the EU Court to annul EUIPO's decision. In 2016 the Court upheld Mondelez's reasons, annulling EUIPO's decision. On 25th July 2018 this decision was confirmed before the EUCJ and communicated by a press release.

The three-dimensional trademark filed in 2002 by Nestlé

The EUCJ recalled that a three-dimensional trademark can acquire distinctive character through use even when it is used in combination with a figurative or denominative trademark; and that distinctive character through use requires that the sign claimed is able to identify the product in question as originating from a particular Company.
With regard to distinctiveness, the Court had also ruled that it is not sufficient to show that a significant part of the reference public in the EU considered in its entirety perceives the trademark as an indication of the commercial origin of the goods identified by it.
According to the Court, in fact, in order to speak of the acquired distinctive capacity of a trademark, this must be proven in all EU member states.

In this specific case, Nestlé had shown that distinctive capacity had been acquired in 10 Member States (Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the United Kingdom), but not for the other territories that – at the time – made up the European Union (Belgium, Greece, Ireland and Portugal).

The first packaging after rebranding from Rowntree's to Kit Kat in 1937

The Court concluded that EUIPO had to reconsider the case and verify whether, at the time the trademark application was filed, it had acquired, or not, a distinctive character through use in all the Member States that at that time constituted the EU.

The decision was challenged not only by Nestlé, but also by EUIPO before the EUCJ which, however, upheld the previous decision.

Specifically, the Court ruled that, in order to obtain the registration of such a trademark, it is not sufficient to show that it has acquired distinctive character through use in a significant part of the EU.
With regard to the evidence necessary to prove this use, the Court stated that it is necessary to distinguish the facts to be proven and the means of proof able to demonstrate the facts in question, that is, the distinctive capacity. And even if, for whatever reason, economic operators have grouped several Member States in the same distribution network and have treated those Member States, in particular from the point of view of their marketing strategies, as if they constituted the same single national market, the acquired distinctive capacity must be proven for each individual state.

The Court concluded by confirming the ruling of the EUCJ which stated that the acquisition of the distinctive character of a trademark without an intrinsic distinctive character must be proven throughout the EU and not only in a substantial part thereof, so that, although such evidence can be provided as a whole for all Member States concerned or for groups of Member States, on the contrary it is not sufficient for the Party who has the burden of proof to limit himself to producing evidence which does not include any one part of the EU.


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