On 15 December the General Court decided in its Judgment of 15 December 2016, in Case T-112/13 that the European Union Intellectual Property Office (EUIPO) must reconsider the registration of Nestlé's 3D four finger Kit Kat shape.
Nestlé applied before the EUIPO to register the 3D shape of the four finger Kit Kat chocolate in 2002. After its registration four years later, Cadbury (now Mondelez) applied for a declaration of invalidity. In 2012, The EUIPO dismissed that application on the grounds that the Kit Kat shape had acquired "distinctive character" through its use.
However, yesterday the General Court annulled the Office's decision. Consequently, the EUIPO will have to re-examine whether the Kit Kat four fingers shape had indeed acquired distinctiveness through its use within all EU member states, and not across the EU generally speaking. In addition, Nestlé would have to prove that when it applied in 2002, its Kit Kat shape had already acquired distinctiveness through use in all 15 member states during that time.
The General Court found that Kit Kat had acquired distinctiveness in 10 countries, in particular: the UK, Denmark, Germany, Spain, France, Italy, the Netherlands, Finland, Sweden and Austria. However, it added that this was not sufficient as no proof was provided for countries like Belgium, Ireland, Greece and Portugal.
Despite the General Court disputing that it was not enough to show a significant proportion of the relevant public throughout the EU, but must be shown throughout the relevant member states during that time, Nestlé claimed that it was pleased that the Court had found acquired distinctiveness regarding its Kit Kat shape in 10 countries.
Nestlé now has two months to decide whether to appeal the decision before the EU's highest court.
Written by: The UAIPIT Team