Kit Kat: high threshold for acquired distinctiveness of a trademark
Biscuits and sweets producers Mondelez and Nestlé can’t seem to stop litigating over the shape mark of the KIT KAT candy bar. Previously, the CJEU explained that, when the shape of a chocolate bar conformed to a technical function or followed from the nature of the bar, the shape could not be regarded as a shape mark. This time the Court decided on the distinctive character acquired through use of a mark that is not distinctive in itself – for instance, the shape of a chocolate bar, or a descriptive mark such as THE GREEN PEPPER for vegetables. Such a mark (more correctly, descriptive ‘sign’) without distinctive character cannot be registered. But if used intensively, the mark can gradually come to be regarded as having taken on a distinctive character. After becoming thus accepted, the sign is recognised as a mark – a distinctive trade mark of a particular company. Any kind of circumstance can contribute to proof of acceptance as a distinctive mark. For example: how prominently is the mark used, in what regions and for how long, how big is the marketing spend – it all counts. But such proof is not enough in itself, because it does not show whether the public has actually come to see the sign as a trade mark. As a rule, a market survey needs to be conducted on this aspect. Nestlé had made serious efforts for the KIT KAT bar in this regard: it had conducted surveys in almost all countries that were member states of the European Community when the trademark application was filed. But the CJEU considers recognition as a distinctive mark in only those countries not enough, not even if the population in those member states represents 90% of the total population in the relevant EU territory. This high recognition level in a certain area cannot compensate for the member states where such acceptance has not been demonstrated. The EU may therefore not be regarded as a single market on this particular aspect. Acceptance as a distinctive mark must be judged separately for each individual member state. This makes it almost impossible to demonstrate acceptance of an EU trademark. The last word on this has not been said – I expect Nestlé will appeal this to the CJEU.
Maarten Haak