Unconventional Trademarks Post-KitKat: The CJEU's Standard Of Proof For Acquired Distinctiveness Explained

Many people will by now have heard of Nestle's loss at the EU's highest court, marking the end of a long and arduous battle to secure EU-wide trademark protection over the four-trapezoidal-fingered shape of their famous KitKat bar.

It's not often that trademark cases make the headlines across mainstream media, making this all very exciting for IP lawyers. But the whole thing did seem, at points, rather more like a race to get that "No Break for KitKat" pun-title out asap than an accurate assessment of the legal implications of the Court of Justice's ("COJ") most recent decision. Were matters different, the case might not now seem quite as significant a landmark in EU jurisprudence as one may have been led to assume.

So, was the outcome of the KitKat case more of an Eglise Saint-Roch than the full-blown Notre Dame?

First, a bit of backstory to set the scene. The parties in this dispute require little introduction. Between them, Mondelez International and Société des Produits Nestlé SA encapsulate some of the largest brands in the global confectionary sector; from KitKat, Smarties and Quality Street (Nestle) to Toblerone, Milka and Cadbury (Mondelez), which makes this case a very big deal for chocolate fans.

It all started with a trademark application, as EU trademark disputes tend to do. That application was filed by Nestle in 2002 in the market for "Sweets; bakery products, pastries, biscuits; cakes [and] waffles", and here's the trademark it contained:

The European Union Intellectual Property Office ("EUIPO") raised a not uncommon objection to filings for shape marks, requiring proof of acquired distinctiveness, which Nestle happily provided.

A veritable tower of documentary evidence spanning over close to 70 years of trade within the European market poured through the fax machines at the EUIPO until the office finally decided that they had seen enough.

Third party observations followed immediately. They were all shot down.

The EUIPO registers the KitKat shape in July 2006.

Eleven months later, Cadbury Schweppes PLC files an application to have Nestle's mark cancelled.

Four years later, the Cancellation Division accepts.

Nestle appeal to the Second Board of Appeal. They get the decision. Cancellation overturned.

Now in 2010 Mondelez International acquired Cadbury Schweppes PLC, along with its interest in the case. Chocolate buffs may be familiar with another four-fingered chocolate wafer confection known as the "LEO" bar, sold under the Milka brand...