The EU General Court has recently annulled a decision of an EUIPO Board of Appeal finding on the validity of the Kit Kat trade mark owned by Nestlé on the grounds that the distinctive character of the mark (its four-fingered shape) could not be recognised across all EU Member States.

The original application to register the mark was opposed by Cadbury Schweppes (now owned by Mondelez International) in 2007. The European Union Intellectual Property Office (the “EUIPO”) initially dismissed this action finding that the shape had acquired “distinctive character” through use.

The EU General Court has now, however, annulled this dismissal ruling that, in registering the mark for trade mark protection, the EUIPO had “erred in law” and that it was not enough that the Kit Kat shape had acquired distinctiveness in a substantial part, or the majority, of the EU. The Court also found that, while the Kit Kat mark had been registered in a variety of categories (sweets, bakery products, pastries and cakes), its use in many of these categories had not yet been established. 

The EUIPO will now have to reconsider Nestlé’s application and Nestlé will be required to demonstrate that consumers in all EU Member States recognise the shape as Kit Kat. Nestlé has a two month period in which this decision can be appealed to the Court of Justice of the European Union.

This ruling is significant as it follows the recent invalidation of the Rubik’s cube trade mark in November 2016 (for different reasons) indicating that it is becoming increasingly difficult for shapes to be afforded trade mark protection.

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Contributed by Brian McElligott