Nestle has lost an appeal in Europe over their attempts to trademark the four finger KitKat shape. Judges at the EU Court of Justice dismissed their latest attempt to trademark the shape of their bar, leaving the chocolate bar at risk of being copied by competitors. The battle has been going on for over a decade, but this latest ruling will be a huge setback for the chocolatiers.

The ruling from the ECJ claimed that the EUIPO should now reconsider whether Nestle can retain the shape as an EU trademark. The original trademark was granted in 2006 but was almost immediately disputed by competitors Cadbury’s. Since 2006, the two companies have been back-and-forth in EU courts fighting their case on whether or not it should be a valid mark.

The decision this week was a confirmation of the 2016 decision stating the shape was not distinguishable enough to be a mark.

Alex Borthwick, Of Counsel at top-ranked IP law firm Powell Gilbert, commented:

“This judgment by the Court of Justice of the European Union is a further blow for Nestlé in its long-running trademark battle with Cadbury over whether Nestlé can protect the shape of its four-fingered chocolate bar, KitKat, under trade mark law, following on from a UK Court of Appeal judgment last year that also ruled against Nestlé.

 “In choosing to follow the opinion of the Advocate General, released earlier in 2018, the CJEU has agreed that Nestlé’s EU trademark, a four-fingered chocolate bar shape, lacks distinctiveness across the EU.

 “To prove the distinctiveness of its EU trademark, Nestlé had to convince the court that consumers throughout the EU recognized that the shape of the chocolate bar indicated the origin of the product. Nestle was able to show evidence of acquired distinctiveness from consumers in some EU member states. However, the CJEU held that proving acquired distinctiveness in even a significant part of the EU was insufficient: the test was more stringent and required proof across the EU.  That said, where an economic operator had grouped several member states together in the same distribution network as if they were the same market, the CJEU held that evidence for that cross-border market may be relevant for each of those member states.  This concession did not assist Nestlé, as it had not filed any such evidence. 

 “It is difficult to demonstrate acquired distinctiveness for a shape mark as consumers are assumed not to view product shape as a badge of origin. In this case, Nestle had overcome this hurdle in the EU case for many member states including the UK. This was in marked contrast to the finding of the UK Court of Appeal in its 2017 judgment (in a separate case) in which it held that Nestle’s UK trademark for the KitKat shape had not acquired distinctiveness. Nestle’s difficulty in the EU case arose from the court’s requirement that acquired distinctiveness is demonstrated across the EU.

“Today’s CJEU ruling therefore upholds the decision of the General Court that Nestlé’s trademark for the KitKat shape lacked distinctiveness across the EU, and demonstrates the challenge of showing acquired distinctiveness for EU trade marks, particularly for shape marks.”

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