Nestlé’s battle to trademark the shape has lasted more than 15 years.
In 2002, Nestlé — which has production rights to the Kit Kat everywhere except the United States, where a subsidiary of Hershey produces it under license — applied to register the candy bar’s shape at the European Union Intellectual Property Office.
As part of its application, Nestlé submitted evidence that the shape was recognized as distinctive in most European countries, and in 2006 it was granted a trademark on the shape covering several categories of food.
But the British chocolate maker Cadbury — now a part of Mondelez International — quickly appealed that decision. Mondelez subsidiaries offer similarly shaped products in several European markets: The Kvikk Lunsj, or “Quick Lunch” bar, is popular in Norway; and the Leo bar, sold under the Swiss chocolate brand Milka, is popular in Belgium.
The intellectual property office rejected Mondelez’s appeal in 2012, but the company fought the decision. It won a first victory in 2016, when the General Court of the European Union ordered the intellectual property office to reconsider the appeal.
Rather than settling the case, however, the 2016 decision infuriated all three parties. Nestlé, Mondelez and the intellectual property office all appealed at the Court of Justice, each for a different reason.
On Wednesday, the Court of Justice ruled that the intellectual property office must indeed reconsider Mondelez’s appeal, but Nestlé will be permitted to hold on to its trademark while that process goes ahead.
The only added nuance, experts say, is that apart from presenting proof of acquired character in all member states, a company can also bring proof of acquired character in the European single market as a whole, or in the different product-based markets that make up the single market.
“National borders should not be the only point of reference in the European Union,” Ms. Gallagher, the press officer, explained.
Source : Nytimes
