Advocate General Wathelet last week gave his Opinion in Joined Cases C‑84/17 P, C‑85/17 P and C‑95/17 P. This is the dispute between Société des produits Nestlé SA and Mondelez UK Holdings & Services Ltd concerning Nestlé’s application to register a three-dimensional mark for its KitKat four fingers product in 2006. Mondelez opposed the application in 2007.

As readers may recall, in December 2016 the General Court (Case T-112/13) found that Nestlé had not shown that the trade mark had acquired distinctive character through use in the EU. While the company had shown use in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the UK, it had not done so for Belgium, Ireland, Greece and Portugal.

Nestlé and EUIPO challenged this at the CJEU, arguing that applicants should not have to prove acquired distinctiveness in all EU Member States and that the General Court’s interpretation was incompatible with the unitary character of the EUTM. MARQUES supported this position before the Court.

Acquired distinctiveness can be extrapolated

In his Opinion, AG Wathelet proposed that the Court should dismiss the appeal and uphold the decision of the General Court. However his approach was somewhat less strict than that of the General Court, as he said that acquired distinctiveness in some member states can be “extrapolated” on the basis of the evidence provided for other national or regional markets. He gave the example of a jigsaw puzzle:

if the majority of the pieces of the jigsaw depict the body of a horse, the fact that the only piece of the jigsaw which is missing is that of the head may have a significant impact: even if the majority of pieces suggest that the jigsaw shows a picture of a horse, it is possible that the missing piece depicts the torso of a man. In that case, it would be a picture not of a horse, but of a centaur. That is the risk posed by the selective exclusion of certain Member States from the evidence provided.

Some of the useful points from the Opinion include:

• You have to have "sufficient quantitative evidence" for all Member States but that doesn't mean you have to come in with compelling survey evidence from each Member State.
• Whilst the CJEU in the Lindt bunny case said "It would be unreasonable to require proof of such acquisition in each individual member state", this doesn't mean you can leave out entire regions and markets within the EU (in that case, they only had evidence for three of the 15 Member States).
• The Advocate General recognises the existence of national or regional markets and that operators, such as Nestlé, often group countries together, including for geographical proximity, historical links, common languages, customs or practices (for example, Nordic region, Iberia, UK/Ireland) ("market comparability").
• So evidence from one Member State within such a grouping can potentially be used to extrapolate a conclusion that acquired distinctiveness has been proved in the other Member States within that grouping – but you need evidence to show why, based on market comparability, the former evidence allows the latter conclusion.
• It means the absence of evidence from, say, Luxembourg doesn't mean you cannot get your EUTM registered; you could show acquired distinctiveness in Belgium, France and Germany, say, and show that Luxembourg (bordering all three) is part of the same effective market.
• In the similar case involving Louis Vuitton (but which settled before a CJEU decision), LV had not proved use in the entire Nordic region.
• In this KitKat case, the General Court considered that Nestlé had proven acquired distinctiveness in 10 Member States and also produced at least some evidence (but not good enough to prove acquired distinctiveness) in four more (Belgium, Ireland, Greece and Portugal). It had not put in any evidence at all in relation to Luxembourg.

The Court’s judgment in the case is likely to be published within the next year.

Thanks to MARQUES members Roland Mallinson of Taylor Wessing and Martin Viefhues of Jonas Rechtsanwaltsgesellschaft mbH, who represented MARQUES before the CJEU, for the above information