Nestlé may have been successful in trade marking its slogan…but it appears the four-fingered chocolate bar is not distinctive enough to warrant protection of its shape.
The Court of Justice of the EU (“CJEU”), in a Judgment dated 25th July, upheld the General Court’s previous decision in 2016, wherein it annulled the earlier decision of the European Union Intellectual Property Office (“IPO”) which had erred in law when it found that the chocolate bar had acquired “distinctive character”. The CJEU held that a trade mark can only be protected as an EU trade mark if it can be demonstrated that it has acquired “distinctive character” across all EU member states. This high threshold may have implications on other EU trade marks that may be unable to provide evidence of “distinctive character” across all member states.
The matter will now return to the IPO, 16 years later, for a determination on whether to uphold its initial decision that the trade mark is valid.
It took years for Nestlé to register the slogan “Have a Break” as a trade mark, finally succeeding in 2006…is this a re-run?
There are no caps on the price of chocolate it appears as both Nestlé and Mondelēz have been ordered to pay their own legal bills.
