Nestlé v. Mondelez (KitKat Shape Trademark Case)

“Shape trademarks must demonstrate acquired distinctiveness across all relevant jurisdictions to sustain EU-wide protection.”

SHORT DESCRIPTION

Nestlé v. Mondelez is a landmark decision in European trademark law dealing with the registrability and validity of shape marks. The dispute revolved around Nestlé’s attempt to secure trademark protection for the distinctive four-finger shape of its famous KitKat chocolate bar. Mondelez opposed the registration on the ground that the shape lacked inherent distinctiveness and had not acquired sufficient distinctiveness across the European Union.

The case is significant because it clarified the stringent evidentiary requirements for establishing acquired distinctiveness in the context of EU trademarks, particularly emphasizing the need for proof across all member states rather than a select few.

FACTS OF THE CASE

Nestlé filed an application seeking registration of the three-dimensional shape of its KitKat chocolate bar as an EU trademark. The mark consisted of a four-finger chocolate bar with grooves between each finger, without any logos or branding elements embossed on the product itself.

Mondelez (then Cadbury) opposed the application, arguing that the shape was not inherently distinctive and that consumers did not rely on the shape alone to identify the commercial origin of the product. Mondelez further contended that Nestlé had failed to demonstrate that the shape had acquired distinctiveness through use across all EU member states.

The matter underwent multiple stages of litigation, including decisions from the EUIPO and the General Court, before ultimately reaching the Court of Justice of the European Union.

FINDINGS OF THE COURT

The CJEU held that for a trademark to be registered or maintained on the basis of acquired distinctiveness under EU law, the applicant must prove that the mark has acquired distinctive character throughout the entire European Union. It is not sufficient to establish such distinctiveness in a substantial number of member states or major markets alone.

The Court observed that although Nestlé had provided evidence of recognition in several countries, it had failed to establish that consumers in all relevant member states perceived the shape, by itself, as indicating the origin of the goods.

The judgment emphasized that EU trademarks have a unitary character, and therefore, the requirement of distinctiveness must be satisfied across the whole territory where the mark is intended to be protected.

SUGGESTION / LEGAL PRINCIPLE

This case establishes that shape marks face a particularly high threshold for registration, especially when they lack inherent distinctiveness. Businesses seeking protection for product shapes must ensure that they gather strong and consistent evidence demonstrating consumer recognition across all jurisdictions covered by the trademark.

It further highlights that EU trademark protection is uniform and indivisible, and therefore, partial recognition in select countries is insufficient. Companies must adopt a strategic approach to branding and evidence collection if they intend to rely on acquired distinctiveness for non-traditional marks.

JUDGMENT

The Court ultimately ruled against Nestlé, holding that the evidence submitted was insufficient to prove acquired distinctiveness throughout the European Union. Consequently, the trademark registration for the KitKat shape was invalidated.