In its decision (T-112/13) published today, the Court partly upheld an appeal brought by Mondelez (formerly Cadbury) that arose from an invalidity action it filed in 2007.
Mondelez argued that in considering the application to register the Kit Kat shape as a trade mark, the EUIPO Board of Appeal had only considered evidence of distinctiveness acquired through use in 10 member states.
At the time of Nestlé's trade mark application (2002), the EU had 15 member states. Today, it has 28.
The Court said that in a case such as this one, where the mark does not have inherent distinctive character throughout the EU, the distinctive character acquired through use "must be shown throughout the territory of the European Union, that is, in all the Member States concerned".
But Nestlé had shown distinctiveness "only in a substantial part of the territory of the European Union". Specifically, the Court said that, thanks to Nestlé's surveys and other evidence, the Board had rightly established that the trade mark had acquired distinctive character through use in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria (though this was contested), Finland, Sweden and the UK. These 10 countries represented almost 90% of the population of the EU at the time.
But it had not reached a conclusion on the perception of the mark by the relevant public and assessed the evidence in respect of Belgium, Ireland, Greece and Portugal. (The 15th EU member state at the time was Luxembourg.)
Therefore, said the Court, the Board had erred in law in concluding that the Kit Kat shape had acquired distinctive character through use.
EUIPO will now have to reconsider the case and assess the evidence available from all the member states.
Chocolate case law
In its ruling, the General Court referred extensively to another chocolate-related trade mark case, Chocoladefabriken Lindt & Sprüngli v OHIM (C-98/11) from 2012 as well as Louis Vuitton Malletier v OHIM (T-360/12). It concluded that the Lindt case held that there is no requirement that distinctive character acquired through use be proved for each member state but that "such proof may be adduced globally for all the Member States concerned or separately for different Member States or groups of Member States".
Therefore, if the evidence submitted by the trade mark applicant does not cover part of the EU, even if that part is only one member state, "it cannot be concluded that distinctive character has been acquired through use of the mark throughout the European Union".
Sub-categories of goods/services
The General Court also said that proof of genuine use affords protection only for the sub-category or sub-categories of goods/services for which the mark has actually been used.
In this case, the evidence of use was only in relation to sweets and biscuits and cannot cover the other categories applied for, such as bakery products, pastries, cakes and waffles, the Court said.
This case is just one part of extensive litigation between Nestlé and Mondelez. The parties are also fighting over a UK registered trade mark, and the appeal in that case is due to be heard early next year.
To read more on all the Kit Kat cases, see the list of articles on our dedicated topic page.
