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Nestle finally lost its monopoly on the shape of the KitKat bars

26.07.2018
Business, EU, Switzerland

The European Court of Justice (ECJ) rejected the appeal of the Swiss company Nestle to the decision of the European Court of General Jurisdiction, which annulled in 2016 the registration of the form of chocolate bars KitKat as a trademark. The corresponding decision is published on the ECJ website.
The application for the registration of a three-dimensional symbol in the form of four identical parts of the 4 Finger KitKat bar Nestle filed with the EU body responsible for intellectual property issues (EUIPO) in 2002. In 2006, EUIPO decided to register a trademark, but already in 2007 British Cadbury (now the "daughter" of the American Mondelez) demanded to cancel the registration.

The claim was delayed for several years, but at the end of 2016 the European Court of General Justice quashed the decision of EUIPO to register, citing the fact that when applying for registration Nestle did not prove the recognition of the shape of the KitKat bar from four parts in all the countries then in the EU . The presence of a symbol of the so-called distinctive ability, through which consumers associate it with a specific manufacturer, is considered one of the main conditions for the registration of this symbol as a trademark. Nestle insisted that chocolate bars of four identical elongated pieces were uniquely identified by consumers as KitKat, but the court found that this fact was proved only for ten EU countries - Austria, Great Britain, Germany, Denmark, Spain, Italy, the Netherlands, Finland, France and Sweden, while recognition in four other countries (Belgium, Greece, Ireland and Portugal) has not been proven.

On this basis, the European Court of general jurisdiction canceled the registration of the trademark, but Nestle and EUIPO appealed against this decision, pointing out in an appeal that such an approach was incompatible with the principle of EU unity and the very essence of the union as a single market.

Nevertheless, the ECJ considered the decision of the European Court of General Jurisdiction to be correct, confirming that the trademark being registered as a trademark must have a distinctive ability throughout the EU. The court also pointed out that the proof of the availability of such ability should be submitted by the company that wants to register a new brand, and at the same time the evidence of not covering at least one state entering the EU for registration is not enough.

The ECJ is the highest court of the EU, its decisions can not be appealed.