The court of justice of the European Union (CJEU) has dismissed appeals brought in the high-profile four-finger KitKat case, and upheld a ruling the chocolate bar’s shape did not have acquired distinctiveness, and thus did not warrant trade mark protection.

Not distinctive enough

The ruling brings an end to a 16-year dispute between Nestle and rival Mondelez, which owns brands including Cadbury. The EUIPO must now reconsider whether the three-dimensional shape can be retained as an EU trademark. In the 2016 decision, the court found that the IPO made a mistake when it granted Nestle’s application for an EU wide trade mark in 2002, and Nestle should have provided evidence of distinctive character in every EU member state instead of just 10 countries in which it carried out market surveys. Both parties appealed the ruling. Nestlé said proving distinctiveness in every jurisdiction was asking too much, while Mondelez argued Kit Kat does not have 'distinctive character’ anywhere. The court ruled, ‘The General Court was right to annul IPO’s decision, in which the IPO concluded that distinctive character had been acquired through use of the mark at issue without adjudicating on whether that mark had acquired such distinctive character in Belgium, Ireland, Greece and Portugal.’

Copycat KitKats?

Commenting on the ruling, Shireen Peermohamed, partner in the IP team at law firm Harbottle & Lewis, said ‘while the CJEU’s decision still leaves open the possibility of securing trade mark protection for a shape, the benchmark has now been set very high indeed. Brands looking to register an EU trade mark which is not inherently unique and memorable now face the prospect of having to prove distinctiveness right across the EU. This may mean that brand owners will have to rethink their EU trade mark filing strategy where they cannot do so, and apply only in individual countries where they can.’ She explained that for Nestle, though, the CJEU’s decision ‘marks the end of the road after a 16 year battle: the EUIPO will have little choice but to annul KitKat’s EU trade mark.’ Ms Peermohamed concluded, ‘manufacturers of lookalike bars may of course see this as an opportunity to launch copycat KitKats. However, they should not forget that even without a registered trade mark KitKat may still be able to prevent the marketing and sale of lookalikes by relying on passing off and unfair competition laws.’