The requirement of demonstrating acquired distinctiveness clarified in KitKat-ruling
Nestlé had obtained an EU trademark registration for three-dimensional mark representing the shape of a four-fingered chocolate bar (KitKat’s bar). A competitor filed an application with EUIPO for a declaration of invalidity with respect to the registration on the basis, inter alia, that the four-fingered chocolate bar is devoid of any distinctive character. Nestlé countered the claim by stating that the trademark in question had acquired distinctive character through the use which had been made of the mark in relation to e.g. sweets. The matter was disputed in several instances before it was given to the Court of Justice of European Union (CJEU) in joined cases C-84/17 P, C-85/17 P and C-95/17 P.
The matter before the CJEU focused on the question how acquired distinctive character in relation to a mark that is devoid of any inherent distinctive character across all Member States should be proven to enable the registration of a mark as an EU trademark.
The CJEU emphasised that EU trademark has unitary character and, thus, a sign must have distinctive character throughout the European Union. Accordingly, a mark will not be registered if it is devoid of distinctive character in part of the European Union.
In its judgement the CJEU took a market centric approach, namely that the relevant market for the goods or services and particular circumstances should be carefully analysed. According to the already settled case law, when a mark does not possess an inherent distinctive character, the acquired character must be proved in the part of the European Union in which it did not have such character. The CJEU held that, although it is not necessary that evidence is submitted in respect of each individual Member State, the evidence submitted to prove acquired distinctive character must be capable of establishing such acquisition of distinctive character throughout all Member States of the European Union. It was noted that economic operators may have same distribution network for several Member States and treat those, e.g. for marketing strategy purposes, as if they were one market. In such case, the evidence for the use of a mark within such cross-border markets is likely to be relevant for the concerned Member States. Similar effect can result from geographic, cultural or linguistic proximity between particular Member States if the relevant public in one has sufficient knowledge of the goods and services present in the national market of the other.
The judgement clarifies the required evidence sufficient to prove acquired distinctive character of a mark in the European Union, or the lack of it. If evidence is not provided in respect of all Member States, the other evidence submitted must be such that it enables the finding of acquired distinctive character for those Member States for which no evidence has been submitted. It is likely to vary depending on the field of business as well as the goods and services in question whether or not several Member States can be grouped together.
The judgement emphasises the importance of gathering evidence of trademark use and other such evidence that enables it to be extrapolated to cover other Member States.
Now, the final outcome of the case depends on how the Board of Appeal of EUIPO will reconsider the evidence in accordance with the applicable test defined by the CJEU in the joined cases at hand.
The link to the judgement can be found here.