New EU trademark judgment - KitKat can't catch a break…
For more than 10 years, Nestlé has fought to register the iconic KitKat chocolate bar with four fingers ("the KitKat bar") as an EU trademark for goods in class 30 (confectionery etc.). The European Court of Justice ("CJEU") has found that the KitKat bar is not inherently distinctive, and with this decision the CJEU has ruled on how a trademark owner must prove distinctiveness for use of an EU trademark.
Firstly, the CJEU established that a mark that is not inherently distinctive can only be registered as a trademark if the owner shows that the mark has acquired the necessary distinctiveness through use in the part of the European Union in which the mark did not originally have such distinctiveness. Thus, if a mark lacks the necessary distinctiveness in all EU member states, the mark can only be registered as a trademark if the owner proves that it has acquired the necessary distinctiveness through use in the whole EU.
However, secondly the CJEU pointed out that even though the required proof has to establish that the necessary distinctiveness has been acquired through use in all EU member states, the proof of the distinctiveness for the whole of the EU must not necessarily be shown for each individual EU member state. If the owner of the mark markets and distributes it uniformly in a number of member states, it can be sufficient to document distinctiveness through use for this region (for instance Scandinavia) as a whole.
The EUIPO will have to decide whether Nestlé has shown sufficient proof of the distinctiveness in all EU member states. Consequently, the EUIPO must reassess whether the KitKat bar has acquired the necessary distinctiveness in all of the EU.
Click here to read the decision
Click here to read the press release about the decision