Advocate General Wathelet gives the finger to Nestle’s 4 finger KitKat trade mark application

The Advocate General Wathelet has provided an opinion in regards to an earlier ruling in the invalidity proceedings that Cadbury instigated. The invalidity proceedings contended that the EU Intellectual Property Office (EUIPO) had erred in law when it granted protection to the KitKat bar shape in 2006. It should be noted that the EUIPO only granted protection to the KitKat on the basis that it had “acquired distinctive character”.

Cadbury went onto challenge the KitKat trade mark registration in 2016 at the General Court of the European Union, whereby the trade mark was declared invalid. It was stated that the KitKat shape had a sufficient level of distinctiveness in 10 EU counties’ but it was required to be distinctive in all 28 Member States if it were to be afforded protection as a trade mark. Therefore, 10 EU countries was not deemed to be enough and the trade mark status of the four finger bar was lost.

However, in this decision, the General Court failed to review the KitKat bar’s distinctiveness in Greece, Belgium, Ireland and Portugal. To that end, both Nestlé and the EUIPO appealed the decision.

Because the case is now on appeal from the General Court, the case will be heard by European Court of Justice (ECJ). Before a case begins in the ECJ it may be reviewed by the Advocate General for an opinion, whilst the Advocate General’s decision is not binding it may pave the way that the case is likely go.

Advocate General Wathelet has now come out as advising against Nestlé and the EUIPO and has recommended that the appeal be dismissed thereby maintaining the decision of the General Court. The Advocate General, provided that “Nestlé had not established, in respect of the product concerned, the comparability of the Belgian, Irish, Greek, Luxembourg and Portuguese markets with some of the other national markets for which it had provided sufficient evidence.” In other words, because Nestlé cannot provide sufficient evidence to show the KitKat shape as being distinctive in the Belgian, Irish, Greek, Luxembourg and Portuguese markets, the trade mark should not be reinstated and should remain annulled.

Whilst the ECJ is not obliged to follow the opinion of the Advocate General, if it does it may mean that we will see many KitKat lookalikes.

But why can Toblerone get a trade mark and not KitKat? Well it all comes down to what has been used. The Toblerone triangle is central to the product and its advertising, whereas it is only possible to view the KitKat shape once the wrapper has been removed.

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