As is pretty common in cases which move beyond the EUIPO to the European Courts of Justice, this case will now be pushed down again to the level of the EUIPO, for them to perform some further analysis, as the Court isn’t happy with the manner in which the case was assessed by the EUIPO previously. Specifically, the Court re-emphasised that a trade mark proprietor has to prove that its mark is either inherently distinctive, or has acquired distinctiveness, throughout the EU. The Court here held that the EUIPO had not made findings on these questions for the EU as a whole. It therefore remitted the case back to the EUIPO in order that they might reassess Nestlé’s evidence to see if it does fulfil that EU-wide criteria.
At this point, it looks like all the parties are winners and losers to some degree, but the question of whether the shape is validly registered as an EU trade mark will most likely not be answered finally for many more years. The reason for this is that we can be sure whichever party comes off worst when the EUIPO reconsiders the case will enter a further appeal.
A trade mark registration covering a shape, particularly a pretty functional shape, such as the four bar Kit Kat, is a very significant monopoly and it is therefore not surprising that the quality of the evidence filed in these disputes is critical. Its importance has been highlighted again here.
By Cathy Ayers