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. EUIPO).
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, available at 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.
