Kit Kat

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In April, the advocate general of the Court of Justice of the European Union (CJEU) asked the European Union Intellectual Property Office (EUIPO) to re-examine the distinctive nature of Nestlé’s EU trademark on its KitKat product, and its resulting protection as an EU trademark. It believes that a trademark is not unitary in character and, therefore, cannot be registered as an EU trademark “if the relevant public in part of the European Union does not perceive it as an indication of the commercial origin of the goods or services that it covers.” Nestlé registered the three-dimensional trademark formed of four chocolate fingers, known as “KitKat,” as a trademark in 2006. The EUIPO admitted the European trademark registration, considering it a distinctive mark.

A year later, Nestlé’s main competitor, Mondelez UK Holdings & Services, unsuccessfully sought annulment of the trademark on the basis that it was not distinctive.

Mondelez filed an appeal for annulment against the EUIPO’s decision with the General Court of the European Union (GCEU); on December 15, 2016, the court annulled the EUIPO’s decision, considering that the trademark was not distinctive as, although it had been proven that it had acquired a distinctive character in 10 EU countries, that had not been proven across all Member States, specifically: Belgium, Ireland, Greece and Portugal.

That decision did not please any of the parties, and both Mondelez UK Holdings & Services and Nestlé (together with the EUIPO) filed appeals with the CJEU. Mondelez based its appeal on challenging the GCEU’s conclusion that the disputed trademark was distinctive in 10 Member States.

Nestlé and the EUIPO refuted that there was an obligation to prove the distinctive nature of the trademark in each Member State to have European protection.

We await the CJEU’s final decision.

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