Are you #TeamNestlé or #TeamCadbury, as once again the
two confectioners battled it out in the courts over trade marks?
Previous battles have included, in 2013, where the Court of Appeal
(England and Wales) held that Cadbury could not trade mark its
colour purple and, in January 2016, where the High Court (England
and Wales) invalidated Nestlé's UK shape trade mark for
its four-finger bar.
In 2011, Cadbury was successful with its application to
invalidate Nestlé's EU trade mark for its Kit Kat
four-finger bar shape (pictured above). On appeal, the Board of
Appeal allowed the trade mark as, although the trade mark lacked
distinctive character, it had acquired distinctiveness through use.
Cadbury appealed to the EU General Court.
EU General Court
The General Court considered four main issues as to whether the
trade mark had become distinctive through use (i.e. had it become
distinctive for the goods – 'sweets, bakery products,
pastries, biscuits, cakes, waffles' – that it was
1. Had the trade mark been used for all the goods it was
The four-finger bar could be a sweet or a biscuit but evidence
had not been provided for it being used for 'bakery products,
pastries, cakes and waffles'.
2. Was the trade mark being used in the form pictured above?
Cadbury argued that the four-finger bar had a dominant 'KIT
KAT' logo on it and it was this logo that acquired
distinctiveness. The Court held that use with another trade mark
did not prevent the four-finger bar itself being able to indicate
its commercial origin (i.e. that it was from Kit Kat or
Nestlé) and a significant percentage of those surveyed and
shown just the four-finger bar shape had 'spontaneously and
immediately' associated it with Kit Kat or Nestlé.
3. Was the evidence insufficient, as Cadbury argued it did not
prove acquired distinctiveness and the surveys were designed in a
way leading to misleading results?
The Court held that the evidence was relevant and companies that
specialised in market research had undertaken the surveys and their
independence and professionalism had not been questioned and it had
not been explained how the questions could be biased.
4. Had the mark acquired distinctive character throughout the
The Board of Appeal had been wrong to find that it was
sufficient that the countries that survey evidence had been
provided for made up almost 90% of the EU population and almost 50%
of those surveyed in these countries recognised the mark as being
from Kit Kat/Nestlé. Instead the test should be whether,
throughout the EU (not just a substantial proportion of all the EU
members put together), a significant proportion of the relevant
public perceived the mark as indicating the commercial origin of
the goods (i.e. it being from Kit Kat/Nestlé). Therefore,
despite it being shown that the trade mark acquired distinctiveness
through use in Denmark, Germany, Spain, France, Italy, the
Netherlands, Austria, Finland, Sweden and the UK, the Board of
Appeal needed to analyse recognition in Belgium, Ireland, Greece
and Portugal, as a lack of recognition in one part of the EU could
not be overcome by higher awareness in other parts of the EU.
The trade mark had not acquired distinctive character through
use and the earlier decision that the trade mark was invalid was
upheld. This decision shows just how difficult it can be to
register a shape as a trade mark.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).