Nestlé has run up against a problem in its long running battle for EU trade mark protection on its KitKat chocolate bar. A senior adviser to the European Court of Justice has advised the shape of the chocolate bar isn’t distinctive enough across enough EU member states to retain its trade mark protection.
It’s just the latest setback in the fight between Nestlé and Mondelēz, the conglomerate that owns Cadbury.
Originally successful
When Nestlé applied for EU trade mark protection for the 3D shape of the KitKat bar in 2002, they were successful. Having been granted the EU trade mark in 2006, however, they were challenged by Cadbury a year later.
However, at the time the European Intellectual Property Office (EUIPO) sided with Nestlé, and said KitKat had “acquired distinctive character” and could therefore retain its protection. Cadbury promptly appealed, and the General Court of the EU agreed with them and annulled Nestlé’s trade mark protection in 2016. This was on the grounds that not enough countries across the EU recognised the shape.
Inadequate analysis
The General Court’s judgement ruled that while KitKat’s 3D shape is distinctive in ten EU countries, this wasn’t enough for trade mark protection. Furthermore, the Court ruled that the EUIPO had failed to properly analyse how KitKat is recognised across certain countries.
Ten countries had been included in the original EUIPO judgement as recognising the KitKat’s inherent shape. These are: Britain, Sweden, Finland, Austria, the Netherlands, Italy, France, Spain, Denmark and Germany. However, countries including Ireland, Portugal, Greece and Belgium were not properly assessed and therefore made it necessary to revoke the earlier trade mark protection.
Further appeal
Both Nestlé and the EUIPO then appealed this decision, forcing it all the way to the European Court of Justice. The advisor’s decision backing Mondelēz upholds the annulment of KitKat’s trade mark, but it’s not binding. However, it is very influential and is likely to strongly affect the final outcome.
In a separate UK based decision last year, the Court of Appeal rejected Nestlé’s application to register trade mark protection for KitKat on the grounds that the shape has “no inherent distinctiveness.”
Obviously, this will have been a blow to Nestlé, but a high profile case like this also illustrates the difficulty even major companies have in registered a so-called ‘shape’ mark. It’s likely that this will give other brands pause for thought when considering registering the shape of their product.
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