By: Désirée Fields (London, UK) and Melissa Brown (Birmingham, UK)

In a decision of significant impact on brand owners, the European Union General Court (EUGC), has held that acquired distinctiveness for European Union trade marks (EUTMs) must be proven throughout all EU Member States rather than in relation to a substantial part or the majority of the relevant public in the EU (judgement of 15 December 2016, T-112/13).

In 2002, Nestlé applied to register its four-finger KIT KAT chocolate bar as a 3D/shape mark. The EUIPO granted the registration in 2006.  However, the following year, another chocolate manufacturer sought a declaration that the mark was invalidly registered.

Upon reconsideration, the EUIPO declared the 3D registration invalid in 2011. However, in 2012 whilst the EUIPO Board of Appeal confirmed that the mark lacked distinctive character, it overturned the 2011 decision on the basis that the mark had acquired distinctiveness in the EU through use.

On appeal to the EUGC, the most notable ground which the Court had to consider was whether or not the Board of Appeal had correctly assessed the territorial scope of evidence required to prove whether an EUTM had acquired distinctive character through use of that mark in the EU. Examining the relevant case law, the EUGC concluded that it was necessary to prove whether, throughout the EU, the brand owner had proven that a significant proportion of the relevant public perceived the mark as an indication of the commercial origin of that mark. It was not possible to merge all the EU Member States and regions. Rather, it was necessary for the trade mark owner to provide evidence of acquired distinctiveness in respect of each Member State which was a part of the EU at the date of filing the application for registration. Here, the EUGC held that the EUIPO Board of Appeal could not have come to the conclusion that a mark had acquired distinctiveness through use in all EU Member States when evidence of recognition of the mark had only been provided in respect of 10 out of the 15 EU Member States concerned.  This was irrespective of the fact that the population of those 10 Member States formed 90% of the population of the EU.

The case will now return to the EUIPO for the Office to reassess whether or not the KIT KAT 3D shape had acquired distinctiveness at the date of registration in each of the 15 Member States forming part of the EU at the date of the application for registration.

Practical significance

This decision presents a significant challenge to trade mark owners facing objections from the EUIPO on grounds of lack of distinctiveness. The burden is especially high where non-verbal marks (such as 3D marks) are concerned, as brand owners must present evidence of acquired distinctiveness in respect of each and every Member State forming part of the EU at the date of the application for registration (of which there are currently a total of 28).  Collating such evidence is both costly and time intensive.  Brand owners who have doubts concerning the inherent distinctiveness of their trade marks should therefore consider keeping a repository of evidence proving use of such marks. Alternatively, brand owners may wish to consider filing national trade mark applications in individual EU Member States where such evidence is readily available.