In the latest round of the long-running battle over whether the three dimensional shape of Nestlé’s 4-Finger Kit Kat product is registrable as an EU trade mark, the CJEU has considered the extent to which acquired distinctive character must be proved in respect of marks which lack inherent distinctive character.

In Joined Cases C-84/17 P, C-85/17 P and C-95/17 P Société des produits Nestlé SA v Mondelez UK Holdings & Services Ltd (available here) the CJEU dismissed Nestlé’s appeal against the decision of the General Court.

Mondelez argued, and the Court accepted, that if there is a part of the Union, even if only a single member state, in respect of which it has not been proved that the mark has acquired distinctive character then the mark cannot be registered as an EU trade mark. The General Court was, accordingly, correct to hold that the 4-Finger Kit Kat shape was not registrable in the absence of acquired distinctive character being established in Belgium, Ireland, Greece and Portugal.

The Court also observed that it is not the case that evidence of acquired distinctive character must always be provided on a member-state-by-member-state basis. In some cases it may be possible to group member states together by geographic, cultural or linguistic proximity or even give evidence of acquired distinctive character in respect of the entire EU.

Tom Mitcheson QC and Jeremy Heald represented Mondelez. Simon Malynicz QC represented Nestlé.