The CJEU has clarified the scope of the evidence that is required to prove acquired distinctiveness in the EU in Joined Cases C‑84/17 P, C‑85/17 P and C‑95/17 P Société des produits Nestlé SA and Mondelez UK Holdings & Services Ltd (concerning the shape of a four-finger chocolate bar). MARQUES intervened in the case in support of Nestlé.

The Court rejected all the appeals from the General Court judgment that were before it, but took the opportunity to address whether evidence of acquired distinctiveness has to be provided for every EU member state.

Evidence may be relevant to the whole EU

The Court stated: “No provision of Regulation No 207/2009 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State.” It is therefore “not inconceivable” that evidence may be relevant to several Member States, or even the whole EU.

In line with the Advocate General’s Opinion, the Court said that trade mark owners may treat several Member States as one market: “In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned.” This is also true when the relevant public of one Member State has a sufficient knowledge of the products/services on the market in another Member State.

This means that, though it is not necessary to submit evidence in respect of each Member State, “the evidence submitted must be capable of establishing such acquisition throughout the Member States of the European Union”.

Whether or not the evidence submitted does prove that is a matter for EUIPO, subject to the scrutiny of the General Court.

General Court upheld

In this case, therefore, the General Court was right to hold that EUIPO had erred in its finding that the four-finger mark had acquired distinctiveness through use, without adjudicating on whether that was the case in Belgium, Ireland, Greece and Portugal.

There are at present 28 EU Member States, although there were just 15 when Nestlé applied for the four-finger mark. There will be 27 Member States after Brexit in March next year.

Nestlé must now return to the Board of Appeal where it can argue that its evidence already submitted meets the new test, or seek to adduce further evidence.

MARQUES intervention

Martin Viefhues of JONAS represented MARQUES before the CJEU. Roland Mallinson of Taylor Wessing assisted in the amicus intervention. He said:

The CJEU has ruled on the geographic spread of the evidence needed to prove acquired distinctiveness for an EU trade mark that has been held inherently non-distinctive throughout the EU. The ruling is significant because:

• brand owners had been concerned that it would be necessary in future to submit evidence (perhaps including survey evidence) specifically covering each of the 28 EU Member States;
• it confirms that this is not needed and instead the evidence can potentially be submitted for regional markets (such as the Nordics, Iberian Peninsula, Baltic States and CEE regions that companies often operate within) or, for example, markets with consumers that are closely connected culturally.

What is essential is that the evidence is at least capable of showing acquired distinctiveness in the Member States for which specific single-country evidence may not have been provided … The widespread reports that this spells the end of the Kit Kat shape trade mark are premature. There is still at least one more decision on this to follow.

Roland was also interviewed on ITV News about the decision. See the interview here.