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On 25th July 2019, the third chamber of the European Union Court of Justice annulled the registration of the three-dimensional mark of the product the four finger KitKat, which was registered in 2006 by Société des produits Nestlé, S.A. (“Nestlé”), finding that it had not been demonstrated that the image had acquired a distinctive character in four countries: Belgium, Ireland, Greece and Portugal.

The judgment based its legal arguments upon paragraphs 1, 2 and 3 of article 7 of the Council  Regulation (EC) nº 207 26th February 2009, on the European Union  trademark which reads:

<<1. The following shall not be registered:

 b) trademarks which are devoid of any distinctive character;

  1. Paragraph 1 shall apply even if the grounds of non-registrability exist in only one part of the [European Union].
  1. Paragraph 1 b) […] shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it>> 

The facts date back to 2002 when Nestlé applied for the registration of the three-dimensional image the four finger KitKat, and the registration was eventually granted by the European Union Intellectual Property Office (EUIPO) in 2006. In 2007, Mondelez UK Holdings & Services (“Mondelez”) requested the annulation of the prior registration, however the EUIPO rejected the annulation finding that the three-dimensional image had acquired a distinctive character due the use that had been made of it in the European Union in accordance with article 7.3 of the Regulation regarding the European Union trademark transcribed above.

Mondelez appealed the above decision before the General Court, which pursuant to judgment dated 25th December 2016, considered that the acquisition of a distinctive character had been proven only in respect of one part of the territory of the European Union, annulling the decision of the EUIPO of 2007.

Nestlé and the EUIPO on the one hand and Mondelez on the other appealed in cassation against the judgment arguing that:

  1. Nestlé and EUIPO maintained that the trade mark had acquired a distinctive character through use in each of the member states.
  2. Mondelez denied that the distinctive character had been demonstrated in some countries of the Union.

Finally, the European Union Court of Justice examined and declared both appeals inadmissible stating the following:

  1. The object of Mondelez’s appeal is not the annulment of the judgment under appeal, but the amendment of certain legal grounds of the judgment.
  2. With regard to the appeal of Nestlé and the EUIPO, the Court indicated that when signs are devoid of inherent distinctiveness, registration can only proceed if evidence of the acquisition of distinctiveness throughout the European Union is provided.

Likewise, it indicates that evidence that the sign has acquired distinctiveness  is not necessary in each country, however, for example, instead this can be done by markets, requiring, where appropriate, a single piece of evidence for each of the markets.

Finally, the European Union Court of Justice confirms the judgment of the General Court concluding that the registration of the trade mark had been granted without ruling on the acquisition of distinctive character in Belgium, Ireland, Greece and Portugal, with the exception of regions or countries where distinctive character had not been established.

As a result of this judgment, the EUIPO shall have to re-examine whether the sign subject to registration as a result of its distinctive character acquired through use can be maintained as a trade mark of the European Union or whether its registration should be ruled out.

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