The European Court of Appeal today dismissed Nestlé’s attempt to trademark the four-finger shape of the chocolate bar. It ruled that the manufacturer had failed to prove the shape of the bar had become distinctive of its goods across the EU.
Commenting on the result, Lucy Harrold, intellectual property lawyer at Keystone, said: “It was previously thought that brand owners only needed to prove their mark had acquired distinctiveness through use in a substantial part of the EU, but this decision holds that it is necessary to prove distinctiveness across the whole territory of the EU.
“Not only that, but a court will judge this by looking at consumer evidence for each individual member state, rather than the evidence as a whole and across borders, although evidence of a particular cross-border marketing strategy may assist.”
Proving recognition
Harrold said that very few – if any – brands were likely to be able to prove this level of recognition in every EU member state for a particular mark that had acquired distinctiveness in some states.
“It will be relevant to brand owners where they have a mark that needs to show it has acquired distinctiveness through use and so is particularly important in the context of unusual marks over colours, shapes or scents.
‘Higher hurdle’
“For food manufacturers seeking to obtain protection – particularly after long use – over, for example, the shapes or colours of their products, it will mean a higher hurdle of consumer evidence in each EU member state. It will be advisable to maintain a comprehensive portfolio of national registrations for that category of marks.”
Nestlé launched the appeal after failing to convince the General Court in Luxembourg in 2016 that the shape of its Kit Kat chocolate bar was distinct enough. It followed a long-running dispute between Nestlé and Cadbury – now owned by Mondelēz – over the shape of the classic product.
It ruled that the manufacturer had to prove that the chocolate bar was recognisable in every EU country, which it failed to do in Belgium, Ireland, Greece and Portugal.
Meanwhile, in February, the Scotch Whisky Association secured a 10-year trademark for Scotch whisky in China, during a three-day trade visit to the country with Prime Minister Theresa May.