No Break for KitKat as ECJ Finds the Four-fingered Shape Lacks the Acquired Distinctiveness for EU Trade Mark Protection
ECJ finds KitKat's four-fingered shape lacks the acquired distinctiveness for EU trade mark protection


The European Court of Justice (ECJ) has recently ruled that the three-dimensional, four-fingered shape of the KitKat chocolate bar lacks the acquired distinctiveness for EU trade mark protection.

The ECJ followed the opinion recently handed down by the Advocate General recommending that the appeals brought by Nestlé and the European Intellectual Property Office (EUIPO) be dismissed. The ECJ found that Nestlé failed to adduce sufficient evidence to demonstrate that the 'KitKat 4 fingers' product had acquired distinctiveness across the EU and the decision provides welcomed guidance on the evidential proofs required to demonstrate acquired distinctiveness.

Background – Evidence of Acquired Distinctiveness -Substantial part of EU or throughout EU? 

The ECJ's ruling follows on from a decade-long battle between Nestlé and Mondelēz (the company which owns Cadbury). The original registration of the trade mark was opposed by Mondelēz in 2007. The EUIPO initially dismissed this action and found that the shape had acquired distinctive character through use within the meaning of the EU Trademark Regulation (207/2009EC).

The General Court subsequently cancelled the registration of Nestlé in 2016 on appeal by Mondelēz, finding that the EUIPO had erred in law. The General Court ruled that Nestlé failed to demonstrate that the four-fingered shape was of acquired distinctive character across all member states. The General Court found that the EUIPO had not applied the correct legal test for acquired distinctiveness when the EUIPO failed to consider the acquired distinctiveness of the trade mark in Greece, Portugal, Ireland and Belgium. The surveys submitted to illustrate the distinctive character of the trade mark in these countries relied on data from other countries.

The General Court's decision was appealed to the ECJ by Nestlé and the EUIPO. In his opinion issued 19 April 2018, Advocate General Melchior Wathelet recommended the ECJ uphold the General Court's findings and agreed that evidence of acquired distinctiveness relating only to a part of the EU was insufficient.

ECJ Decision 

The ECJ upheld the General Court's ruling that acquired distinctiveness must be shown across - and not just for a substantial part or majority of - the EU. By failing to demonstrate acquired distinctiveness in Greece, Portugal, Ireland and Belgium, the 'KitKat 4 fingers' mark was not capable of registration. 

However, importantly for applicants seeking to rely on acquired distinctiveness to register an EU trade mark, the ECJ stressed that evidence of acquired distinctiveness need not be submitted in respect of each member state.  If the applicant treats a group of member states as a single market for distribution or marketing purposes, the evidence of use within such a cross-border market is likely to be relevant for all member states concerned.  The ECJ echoed the findings of the Advocate General who found that, because of the unitary nature of the EU, entire regions and markets cannot be ignored but that account can be taken of the geographical size and distribution of the regions in which acquired distinctive character has been established in order to ensure that the evidence constitutes a quantitatively and geographically representative sample. 

What's next for KitKat and brand owners? 

The matter will return to the EUIPO for adjudication and Nestlé will have a further opportunity to submit evidence as to the acquired distinctiveness of its four-fingered shape. 

The ECJ's decision provides valuable insight of the evidential burden for acquired distinctiveness and such clarification will be welcomed by brand owners seeking to rely on acquired distinctiveness in trade mark registration applications. 

Contributed by: Leo Moore 



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