On 15 December 2016, the General Court (the "Court")
issued a judgment on the distinctive character acquired through use
of a shape trade mark. The judgment provides useful guidance on how
to demonstrate acquired distinctiveness of a shape mark (Case
T-112/13, Mondelez UK Holdings & Services v.
The dispute arose when Société de produits
Nestlé SA ("Nestlé") filed an application
for the registration of a three-dimensional sign (the Kit Kat
chocolate bar) with the European Intellectual Property Office (the
"EUIPO"). Cadbury Schweppes plc ("Cadbury")
objected and claimed that the trade mark should be declared invalid
on the grounds of lack of distinctive character. While the
Cancellation Division declared the trade mark invalid, the EUIPO
held on appeal that Nestlé had sufficiently showed that the
trade mark had acquired a distinctive character through use.
Cadbury further appealed to the Court in order to obtain the
annulment of the decision of the EUIPO.
First, the Court looked at Cadbury's assertion that the
trade mark had not been used with respect to all the relevant
goods. The Court recalled that when a trade mark only covers
certain products of a category of products in the Nice
classification, the trade mark can be granted for sub-categories.
The Court went on to state that a trade mark can also be protected
for goods and services that are not per se covered by the
trade mark but that are similar and belong to the same group. The
Court determined that in the case at hand, the Kit Kat bar could be
classified as a sweet, a candy or a biscuit but did not fall into
the category of bakery products, pastries, cakes and waffles
(contrary to what the EUIPO had stated).
Second, the Court examined whether the trade mark had been used
in the form in which it was registered. Cadbury indeed asserted
that the Kit Kat three-dimensional sign (i.e., the four
chocolate fingers) had acquired its distinctive character through
its word mark Kit Kat and not through its shape. However, referring
to its previous case law relating to Kit Kat chocolate bars
(See VBB on Belgian Business Law, Volume 2015, No 9, p. 12,
www.vbb.com), the Court held that the trade mark as such must
indicate the commercial origin of the goods, i.e. enable
the consumers to identify the goods as originating from a
particular undertaking. The Court then added that it is irrelevant
whether or not the shape of the trade mark appears on the packaging
or is visible at the time of the sale.
Since various surveys had shown that consumers were associating
the shape trade mark with the word mark Kit Kat, the Court decided
that the trade mark had been used in the form in which it was
registered and that it had acquired distinctiveness through use.
The Court based its conclusion on the evidence presented by
Nestlé (i.e., surveys, market shares, turnover and
advertisement expenditure, advertising material and the
long-standing use of the trade mark) which it held was sufficient
to assess distinctiveness.
Third, the Court looked at the territory within which the
acquired distinctive character must be shown. While it is not
necessary to provide the same kind of evidence for every relevant
Member State, the Court held it to be necessary for the trade mark
holder to demonstrate that a significant proportion of the
population of each of the relevant Member States can identify the
shape trade mark as relating to Kit Kat chocolate bars. The Court
found that Nestlé did not provide sufficient evidence to
show acquired distinctiveness in specific Member States. Hence, it
held that the EUIPO had erred when it considered that a trade mark
had acquired distinctiveness when a substantial proportion of the
EU public, regardless of the EU Member States taken individually,
could identify the goods as being Kit Kat chocolate bars.
As a side note, the Court also stated that the EUIPO is not
bound by decisions from national intellectual property offices
which reject, for their own territory, the distinctive character of
the trade mark.
Based on the foregoing, the Court referred the case back to the
EUIPO to reassess the acquired distinctiveness in those Member
States where it had not sufficiently assessed the evidence in the
decision under appeal.
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.
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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.
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