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Europe: EUGH for the trade acceptance of European Union trademarks

Procedural progress
Nestlé is a holder of a 3D EU trademark that corresponds to the "KitKat" bar marketed by it and protects its design. The trademark is attacked by a competitor and initially deleted, on request, by the cancellation division of the EU Office for Intellectual Property (EUIPO). The board of appeals upheld the decision on the grounds that although the trademark was not protectable per se (so-called original protectability), following intense use it had become a protectable trademark (so-called trade acceptance). In the following instance, the Court of the European Union (ECJ) again endorsed the view of the cancellation division. The trade acceptance has been proven by Nestlé for only a part of the EU zone. However, in some member states (Belgium, Ireland, Greece, Portugal), there is a lack of findings on the perception of the trademark.

ECJ decision
Finally, the European Court of Justice (ECJ) has now confirmed the decision of the court of first instance (ruling dated 25/07/2018 - C-84/17 P; C-85/17 P; C-95/17 P). For EU trademarks, it must be proven that they have trade acceptance for each Member State of the EU. Separate evidence for each Member State is not necessary only if the documents submitted allow the conclusion that the trademark has trade acceptance in all Member States. This could apply, for example, if several member states were treated as a single market for the sales and marketing of certain goods. In the present case, the input instance of the EUIPO now must make these pending findings.

Background and comments
The EU trademark is more than a combination of national Trademark rights. With an EU trademark, the owner obtains uniform protection throughout the EU. Therefore, on the topic of trade acceptance, it is correct not to focus on only one part of the EU. The rigid adherence to national boundaries is rather contrary to the concept of a common internal market. However, in this case the ECJ has rejected alternative ways, such as focusing on the perception of the EU citizens in their entirety.

For companies, it will be no easier to provide the evidence of trade acceptance. This is because the appropriate evidence for this such as advertising materials, sales figures, certifications of customers and professional associations as well as public opinion reports must now cover even the smallest countries such as Malta and Cyprus. Especially in the case of shape marks of goods such as the "Kit Kat" bar that protect and monopolise the design of the products, which is often so important, these efforts can nevertheless be worthwhile. Where there is no Europe-wide evidence, the attention can be diverted to national brands. In actual fact, it is sometimes sufficient for protection in just one relevant market to force a competitor to divert to alternative designs.

Author: Henning Kohlmeier