KitKat case makes even harder proving acquired distinctiveness in the EU

photo-1505664194779-8beaceb93744The European Court has issued a very important and long-awaited decision on joint cases C‑84/17 P, C‑85/17 P и C‑95/17 P, Société des produits Nestlé SA v Mondelez UK Holdings & Services Ltd.

In a nutshell, these cases concern an invalidity proceeding against the following Nestle’s three-dimensional trademark for a chocolate bar:


The ground for this invalidation was a lack of distinctiveness. Nestle submitted various pieces of evidence for different EU member States with exception to Belgium, Ireland, Greece, and Portugal.

Initially, the EUIPO ruled that the mark has a proven acquired distinctiveness. The General Court, however, annulled this decision stating that such acquired distinctiveness has to cover all Member States.

The ECJ took the following position:

It follows that, with regard to a mark that is, ab initio, devoid of distinctive character across all Member States, such a mark can be registered pursuant to that provision only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union (see, to that effect, judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraphs 61 and 63).

Admittedly, in paragraph 62 of the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307), invoked by Nestlé and EUIPO, the Court did find that even if it is true that the acquisition by a mark of distinctive character through use must be proved for the part of the European Union in which that mark did not, ab initio, have such character, it would be unreasonable to require proof of such acquisition for each individual Member State.

However, contrary to what is argued by Nestlé and EUIPO, it does not follow from that finding that, where a mark is devoid of inherent distinctive character throughout the European Union, it is sufficient, in order for it to be registered as an EU trade mark pursuant to Article 7(3) of Regulation No 207/2009, to prove that it has acquired distinctive character through use in a significant part of the European Union, even though such evidence has not been provided in respect of every Member State.

In that regard, it must be pointed out that there is a distinction between, first, the facts to be proved, namely the acquisition of distinctive character through use by a sign that is devoid of inherent distinctive character, and, second, the means of proving such facts.

No provision of Regulation No 207/2009 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State. Therefore, it is not inconceivable that the evidence provided to establish that a particular sign has acquired distinctive character through use is relevant with regard to several Member States, or even to the whole of the European Union.

In particular, as the Advocate General stated, in essence, in point 78 of his Opinion, it is possible that, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned.

The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has a sufficient knowledge of the products and services that are present on the national market of the second.

It follows from those findings that, although it is not necessary, for the purposes of registering, on the basis of Article 7(3) of Regulation No 207/2009, a mark that is, ab initio, devoid of distinctive character throughout all the Member States of the European Union, that evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must be capable of establishing such acquisition throughout the Member States of the European Union.

That said, the question of whether the evidence submitted is sufficient to prove a particular sign’s acquisition through use of distinctive character in the part of the territory of the European Union in which that sign did not, ab initio, have distinctive character is a matter of the assessment of evidence, for which the bodies of EUIPO are primarily responsible.

Such an assessment is subject to the scrutiny of the General Court, which, where an action is brought before it against a decision of a Board of Appeal, has exclusive jurisdiction to find the facts and, therefore, to appraise them. However, that assessment of the facts does not, save where the evidence has been distorted by the General Court, constitute a point of law which is subject, as such, to review by the Court of Justice in an appeal (judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 22 and case-law cited).

Nevertheless, if the bodies of EUIPO or the General Court, after having assessed all of the evidence that has been submitted to them, find that some of that evidence is sufficient to prove the acquisition by a particular sign of distinctive character through use in the part of the European Union in which it is, ab initio, devoid of distinctive character and therefore to justify its registration as an EU trade mark, they must clearly state that that is the case in their respective decisions.

In the present case, first, it follows from the findings above that the General Court did not err in law when it found, in paragraph 139 of the judgment under appeal, that, for the purposes of applying Article 7(3) of Regulation No 207/2009, in the case of a mark that does not have inherent distinctive character throughout the European Union, the distinctive character acquired through use of that mark must be shown throughout that territory, and not only in a substantial part or the majority of the territory of the European Union, and consequently, although such proof may be produced globally for all the Member States concerned or separately for different Member States or groups of Member States, it is not, however, sufficient that the party with the burden of providing such evidence merely produces evidence of such acquisition that does not cover part of the European Union, even a part consisting of only one Member State.

Second, in light of those same findings, the General Court was right to hold, in paragraphs 170 to 178 of the judgment under appeal, that the decision at issue was vitiated by an error in law, in so far as the Board of Appeal found that the mark at issue had acquired distinctive character through use, thereby justifying the application to that mark of Article 7(3) of Regulation No 207/2009, without adjudicating on whether that mark had acquired such distinctive character in Belgium, Ireland, Greece and Portugal.

In brief, this decision will make much more difficult proving acquired distinctiveness across the EU at least because it will require such an evidence to cover the whole EU territory not only a substantial part of it.

Image: Giammarco Boscaro on Unsplash.

How to register my trademark – by myself or to seek professional help?

pexels-photo-1061588Martin Hendry (Virtuoso Legal ) published an interesting and instructive article for Lexology which discusses the options one entrepreneur has in order to register its trademark.

The first case is when the business owner files for a trademark by himself without using professional help by a trademark attorney. The example presents a story of a Plumber company, which wants to develop a franchise network. The company’s owner in attempt to save some money filed a trademark application by himself without any trademark clearance search. In the meantime, he invested in advertisements and branding. The result was an opposition by a third party and financial loses after that. You have to bear in mind that in such situation a legal proceeding for trademark infringement can be activated by the owner of the earlier rights too.

The second case concerns a situation where the owner seeks support of a trademark attorney who does a trademark search for earlier already registered identical or similar marks and analyses the results. In that way, they can identify the chances for a successful registration and the risk for prospective problems.

But what are the chances to run into identical or similar marks?

Not so small. Only the TMView database gives access to more than 48 million trademarks around the world.

Not only the article proclaims that professional help is advisable in such situations but also the need for an IP strategy which to pave the way for a successful exploitation of IPRs after that.

Many companies and entrepreneurs underestimate these elements of their business which in some cases leads to a serious headache and financial loses.


YouTube offers a new tool to combat copyright infringements

pexels-photoYouTube announced its new initiative against illegal uploading of works on its platform.

A new software called Copyright Match tool will watch for re-uploads of content. When such thing happens the user who uploads it will have three options: do nothing; get in touch with the other creator, or request YouTube to remove the video.

The last option, however, can be trigger only if the user is the real copyright holder or has the relevant rights. What’s more, the user has to evaluate whether his work could be interpreted as fair use or be subject to other exceptions to copyright.

More information here.

Source: TBO.

Bentley and Aston Martin failed against a Japanese trademark application

The Japan Patent Office dismissed an opposition filed by BENTLEY MOTORS и ASTON MARTIN against the following Japanese trademark application for Class 12:


This mark is used by Toyota and Tsuburaya ( company responsible for the creation of the Ultraman superhero) for advertisement purposes.

The earlier marks specified in the opposition were:

0 (1)

According to the Patent Office, there was no possibility for consumer confusing despite the fact that the earlier marks had a reputation on the market. The marks were phonetically, visually and conceptually different according to the Office. The graphical resemblance wasn’t sufficient. What’s more this conclusion was supported by the fact that Bentley’s and Aston Martin’s marks coexisting for many years without to create any confusion.

Source:  Masaki Mikami.

WIPO published its Global Innovation Index for 2018

WIPO published its Global Innovation Index for 2018. According to the report, the global leaders in that regard are Switzerland, Netherlands, and Sweden.

In the same list, Bulgaria is placed on the 37th position. The full text of the report can be found here.


Some interesting infographics:


How Puma proved a trademark with reputation – a European court decision

europe-1395916_960_720The European Court issued a decision in case C‑564/16 P, EUIPO v PUMA. This case concerns an attempt by an Italian company to register the following EU trademark for Class 7 – ‘Machines for processing of wood; Machines for processing aluminium; Machines for treatment of PVC’:

downloadAgainst this mark an opposition was been filed by Puma on the ground of several earlier trademarks for Classes:

  • Class 18: ‘Leather goods or imitation leather goods included in this class; handbags and other cases that are not adapted to the goods which they are intended to contain, as well as small articles made from leather, particularly purses, pocket wallets and cases for keys; handbags, … ’;
  • Class 25: ‘Clothing, footwear, headgear; parts and components of footwear, soles, insoles and adjustment soles, heels, boot uppers; … ’;
  • Class 28: ‘Games, toys, including miniature footwear and miniature balls (used as toys); apparatus and gear for physical training, gymnastics, and sport included in this class; … ’;

download (1)On top of that, Puma claimed an acquired reputation of its marks on the territory of the EU.

The EUIPO rejected the opposition considering that the goods are not similar and that there is no strong evidence for a reputation of the earlier marks. The reason for this was the fact that Puma claimed its reputation based on older EUIPO decision regarding its trademarks where they were assessed as such with a reputation.

In the following appeal, The General Court stated that the EUIPO was wrong not to take into account the older decisions.

The European court upholds this conclusion stating:

It is also clear from paragraph 30 of the judgment under appeal that, in the three previous decisions, the competent EUIPO bodies had established that one of the earlier marks had been found, ‘on the basis of a large number of items of evidence’, to have a ‘substantial reputation, at least in France’ and that one of them was also considered ‘in the light of the extensive evidence provided,’ to have acquired ‘a substantial reputation through use in the European Union’, enjoying a ‘high degree of distinctiveness as a result of its “long standing and intensive use” and “high degree of recognition”’. The General Court also established that some of those decisions described in great detail the evidence which had led to the conclusion that the earlier marks had a reputation.

In that context, the three previous decisions, in so far as they had recognised the reputation of the earlier marks, were a strong indication, in the opposition proceedings at issue, that those marks could also be regarded as having a reputation for the purposes of Article 8(5) of Regulation No 207/2009, as has already been stated in paragraph 81 above.

Therefore, as has already been held in paragraph 76 above, EUIPO was required to take into account the three previous decisions relied on by Puma and had to provide an explicit statement of its reasoning in the present case in so far as it had decided to depart from the approach adopted in those decisions on the reputation of the earlier marks.

Do you want advanced options for trademark image searching? Here what TMView gives you

pexels-photo-1157858EUIPO reports about the expansion of the TMView database functionality. What’s new is the fact that you can search for trademark images in the national databases of Spain, Bulgaria, Lithuania, and Greece.

This chance gives now the opportunity for image search among 7 million trademarks.

Apart from this, now you can search even for an element of a trademark image which comes as an advanced option.

For more information here.