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25th July 2018

Kit Kat forced to take a break

EU rules shape of Nestlé’s four-finger snack cannot be trade marked.

Back in 2002, Nestlé registered the shape of a four-finger Kit Kat as an EU trade mark. This wasn’t a straightforward matter – the European Union Intellectual Property Office (EUIPO) at first decided that the shape itself was not enough, on its own, to allow a consumer to identify the origin of the chocolate bar. It was not inherently distinctive and so not registrable.

However, the EUIPO was persuaded that, in actual fact, the shape of a Kit Kat had become so well recognised by the public – and so strongly associated with Nestlé – that it now benefitted from “acquired distinctiveness” and so could be registered after all.

Five years later, rival chocolate manufacturer Mondelez kicked off a decade-long series of challenges to this registration. They scored some early wins, successfully arguing that Nestlé had only proven “acquired distinctiveness” in 10 individual countries of the EU rather than throughout the EU as a whole.

Eventually, both parties appealed to the Court of Justice of the European Union (CJEU) – the highest court of the EU. Mondelez sought to challenge Nestlé’s acquired distinctiveness even in those 10 countries where it had already been established, while Nestlé argued that that EU-wide acquired distinctiveness shouldn’t be necessary in the first place.

The CJEU rejected all arguments on both sides and held that an inherently indistinctive trade mark can only be protected as an European Union Trade Mark (EUTM) if it can show it has acquired the necessary distinctiveness in all parts of the EU where distinctiveness had been lacking. For most purposes, this will be the whole of the EU, so it won’t be sufficient to cherry-pick a few, or even most, EU territories.

In Nestlé’s case, this means the loss of their EUTM, but the decision doesn’t affect national trade mark registrations so the dispute is likely to rumble on at a lower level for many years to come.

In further European food-related news, the CJEU has been advised to reject a Dutch claim that foodstuffs – specifically cheese – should be protected as copyright works in the same way as literature, art and music. The question is essentially whether the law should treat the sense of taste equally with sight, hearing and touch. So far the answer seems to be “no”.

For more details about the Kit Kat case, or to discuss any trade mark-related issue, please contact Graeme Fearon in Thrings’ Intellectual Property team.

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