EU TRADEMARK CASE LAW

The General Court of the European Union chastises the EUIPO for upholding the validity of Nestle’s “KitKat 4 fingers” chocolate bar 3-D trademark.

On 15 December 2016 the General Court of the European Union (GCEU) issued its decision in case T-112/13 concerning the 3-D trademark for the representation of the “KitKat 4 fingers” chocolate bar, registered in 2006 with the European Union Intellectual Property Office (EUIPO) in the name of Nestlé and contested by competitor Mondelez.

The 3-D trademark (represented below) was registered for “sweets, bakery products, pastries, biscuits, cakes, waffles” in Class 30.

In 2012 Mondelez unsuccessfully brought an administrative action before EUIPO requesting that Nestlé’s 3-D mark be declared invalid.

The General Court has now held that EUIPO’s decision on invalidity was erroneous, essentially for two reasons.

Firstly, the EUIPO had no evidence to establish use of the mark for four of the products claimed (bakery products, pastries, cakes and waffles).

Secondly, Nestle had failed to prove that the mark had acquired distinctive character through use in all the 15 states that were members of the EU at the time of registration of the trademark.

Nestle had shown that a significant proportion of the relevant public throughout the EU perceived the shape of the chocolate bar as an indication of the commercial origin of the product. But the court pointed out that not in all EU member states consumers necessarily associate that shape with the name KitKat, since other brands with similar shapes are on sale in several EU countries.

The surveys Nestle had submitted to the court confirmed that the chocolate bar had acquired distinctive character in 10 EU member states (Denmark, Germany, Spain, France, Italy, The Netherlands, Austria, Finland, Sweden and the United Kingdom) but not, the court found, in the remaining five.

The General Court concluded that EUIPO erred in considering it not necessary to prove distinctive character acquired through use of a mark in all the EU member states of the time.

The ruling of the General Court annuls the decision of EUIPO on Mondelez’s request for invalidity of the Nestle’s 3-D trademark. EUIPO must now re-examine the case.