Really takes the biscuit: Kit Kat trade mark saga continues

An Advocate General of the CJEU has stated the EUIPO must re-examine KitKat four finger shape trade mark bid.

The Advocate General Melchior Wathelet has proposed that the appeals filed should all be dismissed.

The saga started in 2002 when Nestle filed an application to the EU Intellectual Property Office to file the shape of their four finger KitKat as a trade mark.

In 2006, this application was accepted.

However, in 2007, Cadbury (now Mondelez) filed an application to the EU IPO in a bid to have the mark declared invalid.

After deliberation, the Office dismissed the application on the basis that the mark had acquired distinctiveness through use.

However, this was not the end of it. Mondelez appealed the decision on the basis that Nestle had not acquired distinctive through use in the whole of the EU.

Moving to 2016, the European General Court annulled the EUIPO decision to uphold the registration and order the EUIPO reconsider the case.

The grounds for this was that the Court believed the EUIPO had not considered the evidence in respect of four member states, therefore their deicison was not valid.

Mondelēz, Nestlé and the EUIPO each brought an appeal against the decision before the Court of Justice for the European Union.

Mondelez continued to argue against the acquiring of distinctive character.

As the decision by the EUIPO was annulled, in essence Mondelez had been successful, at least in part, therefore their appeal was dismissed on the grounds that a successful party cannot file an appeal.

Nestlé and the EUIPO argued that the General Court was wrong in finding it necessary to establish that distinctive character was acquired through use in all of the member states concerned.

Wathelet explained that under case law it would be unreasonable to require proof of distinctive character in each member state, but that this doesn’t mean that the party applying for the trademark can leave out entire regions and markets.

The Advocate General’s decision is not directly binding in that the matter still needs to be considered by the CJEU but it seems that no one is going to be taking a break anytime soon.

By Ellis Sweetenham