In a case related to the shape of the Kit Kat chocolate biscuit bar in an EU court which said it should be re-examined, Nestle has lost a tussle with rival Mondelez International over the validity of its EU trade mark for the shape.

In 2007, the Kit Kat four fingers trade mark was asked to be declared to be invalid by Cadbury Schweppes – now owned by Mondelez International. The company made this appeal to the European Union Intellectual Property Office (EUIPO).

The argument that the Kit Kat shape had acquired “distinctive character” through its use formed the basis upon which the EUIPO dismissed that application.

However that dismissal was annulled on Thursday by the EU’s second-highest court.

The General Court of the EU said in a statement that not just across the EU generally but the EUIPO will have to re-examine whether the Kit Kat four fingers bar has acquired distinctive character through its use within all EU member states.

The Kit Kat shape was registered as a trade mark in sweets, bakery products, pastries, biscuits, cakes and waffles in 2006 by the EUIPO.

The EUIPO had not established use of the trade mark in bakery products, pastries, cakes and waffles, the General Court, based in Luxembourg, said.

The court said that a trade mark applies only to goods where it has been put to use if the trade mark is registered for a category of goods which also has sub-categories,.

Its Kit Kat shape had already gained distinctive character through use in all 15 of the states that had joined the bloc by then when Nestle applied for the trade mark in 20202, Nestle would have to prove.

The Court said that it was not enough for Nestle “to show that a significant proportion of the relevant public throughout the EU, merging all the member states and regions, perceives a mark as an indication of the commercial origin of the goods designated by the mark”.

While not gaining distinctive character in EU countries including Belgium, Ireland, Greece and Portugal, the EUIPO had found that Kit Kat shape had acquired distinctive character in 10 countries – Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the UK, the Court said.

It was pleased the court had acknowledged that the four finger-shape trade mark has acquired distinctiveness in 10 member states of the EU, Nestle said.

“The four finger-shape has been used throughout the EU by Nestle for decades and is known by consumers as being KIT KAT,” the company said. “We continue to review the findings and consider our position.”

Nestle has the option of appealing against the decision before the EU’s highest court within two months.

(Adapted from Reuters)