(CN) – An EU magistrate soured Thursday on Nestle’s attempt to protect the four-finger shape of Kit Kat bars, finding that the trademark lacked distinctive character.
Competing chocolatier Cadbury Schweppes instigated the fight to invalidate Nestle’s trademark in 2007.
Though the European Union Intellectual Property Office initially rejected that application, the EU General Court annulled that decision two years ago, spurring an an appeal to the European Court of Justice.
Advocate General Melchior Wathelet recommended Thursday that the court rule against Nestle, emphasizing that trademarks devoid of distinctive character do not qualify for registration.
“Whilst Nestle provided market research for the majority of the member states, it can be seen … that the information provided for Belgium, Ireland, Greece and Portugal was not sufficient to establish that the relevant public in those countries identified Nestle as the commercial origin of the product covered by the trade mark at issue.”
Wathelet faulted Nestle for failing to include evidence in the case file that would establish whether “the evidence provided for the Danish, German, Spanish, French, Italian, Netherlands, Austrian, Finnish, Swedish and United Kingdom markets also applied to the Belgian, Irish, Greek, Luxembourg and Portuguese markets or could act as a basis for extrapolating the acquisition, by the trade mark at issue, of distinctive character through use in those countries.”
“In that sense, Nestlé had not established, in respect of the product concerned, the comparability of the Belgian, Irish, Greek, Luxembourg and Portuguese markets with some of the other national markets for which it had provided sufficient evidence,” the ruling continues.
Wathelet said this lack of evidence left the General Court with no option but to annul the decision of the Second Board of Appeal of EUIPO.
The opinion of the advocate general is not binding on the Luxembourg-based Court of Justice, which will now begin deliberations.
Reacting to the ruling, a spokesman for Nestle said Wathelet’s “conclusion is based on incorrect factual findings.”
“Nestle did submit sufficient evidence to prove acquired distinctiveness of its iconic Kit Kat four-fingers shape to meet the AG’s proposed threshold (‘comparability’), including in the few countries where evidence was challenged,” the spokesman said in a statement. “We await the ruling of the Court of Justice of the European Union, and hope it will follow the opinion for its legal points while coming to a decision that is favorable to Nestle’s stance.”
Representatives for Cadbury parent Mondelez UK Holdings have not returned an email seeking comment.
In the United States, Kit Kats are made under a license by Hershey subsidiary H.B. Reese Candy Co., but the original Kit Kat was first produced over a century ago by the UK confectionery company Rowntree’s of York.