BBC guest segment – the European Court’s ruling today in the Kit Kat case

06 / 08 / 2018

Still no judgment text available on this, but the press release from the CJEU is now up.

This continues to be a rather dry, technical case albeit interesting because of the well known brand involved.

Nestle have lost their battle to register the shape of their four fingered chocolate bar, the Kit Kat, as a European trade mark.

The courts have previously held that the Kit Kat shape is not in itself sufficiently distinctive to deserve protection as a trade mark.

So Nestle had to prove that as a result of its efforts over many years, people throughout the EU had nevertheless come to recognise the shape as being distinctive of a Kit Kat.

Europe’s highest court has upheld an earlier ruling that in order to achieve registration on that basis, Nestle must prove that the shape of their chocolate bar is sufficiently distinctive throughout the whole of the EU. It is not enough to show that 90% of the EU views the shape as a trade mark.

Nestle had failed to prove its case in relation to inter alia Ireland, Belgium and Luxembourg. That was fatal to its case despite these countries accounting for a relatively tiny segment of the EU population.

The case confirms how burdensome it is for anyone who tries to prove their trade mark has acquired distinctive character in the EU.

The court did at least say that it wasn’t necessary to separately produce evidence for every EU state. If groups of EU countries were regarded as one market, it would be enough to produce evidence covering that Group.

The position of the kit Kat contrasts with that of the Toblerone (ironically owned by Mondelez) the shape of which is successfully registered.