The Judgment of the General Court of 15 December 2016, in the case Mondelez UK Holdings & Services Ltd versus EUIPO and Société des produits Nestlé SA, analyses Article 7 of Regulation No 207/2009.

On 21 March 2002, Société des produits Nestlé SA filed an application for registration of the following  three-dimensional mark

as an EU trade mark for Class 30 of the Nice Agreement, in respect of ‘chocolate, chocolate products, confectionery, candy; sweets; bakery products, pastries, biscuits; cakes, waffles’.

The mark was registered as an EU trade mark but only for ‘Sweets; bakery products, pastries, biscuits; cakes, waffles’.

On 23 March 2007, Mondelez UK Holdings & Services Ltd filed an application for a declaration of invalidity on the basis of Article 7(1)(b), (c), (d), and (e)(ii) of Regulation No 207/2009 in respect of all the goods covered by the trade mark.

The Cancellation Division declared the mark invalid on 11 January 2011.

On 9 March 2011, the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

By decision of 11 December 2012, the Second Board of Appeal of EUIPO upheld the appeal and annulled the Cancellation Division’s decision, based on the contested trade mark being devoid of distinctive character in relation to the goods; the contested trade mark had acquired distinctive character through the use that had been made of it within the European Union; and that the contested trade mark was not caught by the prohibition laid down in Article 7(1)(e)(ii) of Regulation No 207/2009 (that the mark does not consist exclusively of the shape of the product, technically causal of, and sufficient to obtain, the intended technical result).

The applicant submitted that the Board of Appeal breached Article 52(2) of Regulation No 207/2009, read in conjunction with Article 7(3) of that Regulation in so far as it did not correctly assess the distinctive character acquired through use of the contested trade mark for the goods in respect of which that mark was registered. There are four points of analysis.

Lack of use of the contested trade mark for all the goods in question.

Accordant with the Court, the Board of Appeal erred in law when it considered that the product in question could be included in any of the categories of goods in question, including bakery products, pastries, cakes and waffles. Under the case-law, use of the contested trade mark in respect of a product which may reasonably be classified as a sweet or a biscuit cannot entail protection for other categories of goods.

Lack of use of the contested trade mark in the form in which it was registered.

This part was rejected based on case-law that the fact that the shape of a product or the appearance of its packaging has always been used in conjunction with a word element does not mean that that shape or appearance may not be perceived as an indication of commercial origin, since the protection afforded by Regulation No 207/2009 may be conferred on signs consisting of the shape of the product itself that do not contain an inscription or a word element.

Lack of use of the contested trade mark as an indicator of origin and the insufficient evidence provided in that regard.

This part is also rejected as according to case-law, it is not necessary, in order to assess whether a mark has acquired distinctive character through use, for the shape to appear on the packaging of the product or to be visible at the time of sale. A mark may thus acquire distinctive character through use that is visible in advertisements or when the product is consumed. Thus, the Court said that the applicant’s assertion regarding the issue of packaging was incorrect.

Lack of proof of distinctive character acquired through use of the contested trade mark throughout the European Union.

The Court found that the Board of Appeal could not validly conclude its examination of the distinctive character acquired by the contested trade mark throughout the European Union on the basis of the percentage of the public recognising that mark in those (10) Member States, even if the population of those states represented almost 90% of the population of the European Union, without coming to a conclusion regarding the perception of the mark by the relevant public in the rest of the Member States, and without analysing the evidence adduced in respect of those Member States.

Consequently, the Court upheld the plea and annulled the contested decision.