ECJ asks EUIPO to reconsider the three-dimensional shape of ‘4 Finger KitKat’ as an EU trademark

European Court of Justice: In 2006, EUIPO registered the three-dimensional shape of a ‘4 Finger KitKat’ as a EU trademark in respect of sweets, bakery products, pastries, biscuits, cakes and waffles. In 2007, Cadbury Schweppes (now Mondelez UK Holdings & Services) filed an application with EUIPO for a declaration of invalidity of the registration. In 2012, EUIPO rejected that application. The General Court annulled EUIPO’s decision. It considered that EUIPO had erred in law in finding that the mark at issue had acquired distinctive character through use in the EU, when such acquisition had been proved only for part of the territory of the EU. Although it had been established that the mark at issue had acquired distinctive character through use in ten countries, the General Court held that EUIPO could not validly conclude its examination without ruling on the relevant public’s perception of the mark in four other Member States (in particular, Belgium, Ireland, Greece and Portugal) and without analysing the evidence adduced in respect of those Member States.

Nestlé, Mondelez and EUIPO appealed to the Court of Justice against the judgment of the General Court. Appeal by Mondelez was found inadmissible. Nestlé and EUIPO submitted in their appeals that the General Court’s interpretation is incompatible with the unitary character of the European trademark and the very existence of a single market.

ECJ concluded that, although it is not necessary, for the purposes of registering a mark that was formerly devoid of distinctive character, that evidence of the acquisition by that mark of distinctive character through use be submitted in respect of each individual Member State, the evidence submitted for registering a sign as an EU trademark under Article 7(3) of Regulation No 207/2009 must be capable of establishing such acquisition throughout the Member States of the EU in which the sign did not, ab initio, have such character for the purposes of Article 7(1)(b) (Storck v OHIM, C-25/05 P, EU:C:2006:422, paragraph 83). The Court also stated that the part of the EU referred to in Article 7(2) may be comprised, where necessary, of a single Member State.

It followed that, with regard to a mark that is, ab initio, devoid of distinctive character across all Member States, such a mark can be registered pursuant to that provision only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union (Chocoladefabriken Lindt & Sprüngli v OHIM, C-98/11 P, EU:C:2012:307, paras 61 and 63). This was contrary to the arguments by Nestlé and EUIPO that where a mark is devoid of inherent distinctive character throughout the EU, it is sufficient, in order for it to be registered as an EU trademark to prove that it has acquired distinctive character through use in a significant part of the European Union, even though such evidence has not been provided in respect of every Member State.

ECJ held that General Court was right in annulling EUIPO’s decision, in which EUIPO concluded that distinctive character had been acquired through use of the mark at issue without adjudicating on whether that mark had acquired such distinctive character in Belgium, Ireland, Greece and Portugal. On the basis of those considerations, the Court dismissed the appeals of Nestlé and EUIPO.[P Société des produits Nestlé SA v. Mondelez UK Holdings & Services Ltd, formerly Cadbury Holdings Ltd. and EUIPO,[2018] Bus LR 1848,  decided on 25-07-2018]

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