The EU Intellectual Property Office (EUIPO) is going to have to reconsider whether KitKat’s registration for the shape of its four-finger bar is still valid. The General Court of the European Union (EGC) confirmed in December 2016 that distinctive character in the shape must be proved in all member states at the time of the application.
2002 - Nestlé applied for registration of its four-finger bar.
2006 - EUIPO agreed to register the shape with respect to sweets, bakery products, pastries, biscuits, cakes and waffles. It was rejected for chocolate, chocolate products, confectionery or candy.
2007 - Mondelez (formerly Cadbury) applied for a declaration of invalidity against the registration saying it did not have distinctive character and the shape was necessary to obtain a technical function.
2011 – EUIPO found the registration was invalid and Nestlé lost its registration.
2012 – Nestlé successfully appealed and it was found that the shape was not related to technical function.
2016 – the EGC dismissed Nestlé’s application to register the shape mark again. The EGC’s reasoning was that the shape did not have inherent distinctive character throughout the EU and that ‘the distinctive character acquired through use of that mark must be shown in all the member states concerned’.
In light of the EGC’s findings, the EUIPO must now re-examine whether the EU shape mark can be an EU trade mark registration.
It has already been established that the shape mark had acquired distinctive character in 10 of the 15 countries that were member states in 2002 (at the time of Nestlé’s application), namely, Denmark, Germany, Spain, France, Italy, The Netherlands, Austria, Finland, Sweden and the UK. However, the EUIPO will have to make another decision as to whether, at the date of filing the application, it had acquired distinctive character in the remaining five member states – Belgium, Ireland, Greece, Portugal and Luxembourg.
There is clearly a high threshold to get a shape mark through the EUIPO. It is probably easier to make national applications, but Nestlé is all too aware from its UK proceedings that this strategy is not always successful. Just because a national registry considers that a mark has acquired distinctiveness does not mean that the EUIPO will, even if submitting the same evidence.
Businesses also need to consider whether it is worth the time and money registering shape marks, as they are not only difficult to register, but hard to enforce. They are likely to face challenges to validity, so it may be a more prudent strategy to ensure that brands, logos and slogans are registered as much as possible, particularly as the courts seem to think that people buy products based on these badges of origin rather than the shape of a product.