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15.12.2016, Urheber und Medienrecht, Internet- und Onlinerecht, Markenrecht
Schokoriegel "Kit Kat" auf dem Prüfstand - Bleibt die Marke bestehen?

Das Gericht der Europäischen Union (EuG) hat mit einem Urteil das Amt der Europäischen Union für Geistiges Eigentum (EUIPO) dazu verpflichtet die Markeneintragung über "Kit Kat 4 Fingers" erneut zu überprüfen.

Was geschah bisher?

2006 wurde die Marke "Kit Kat 4 Fingers" in Klasse 30 „Bonbons, Bäckereierzeugnisse, feine Backwaren, Kleingebäck, Kuchen und Waffeln“ für das Unternehmen Nestle eingetragen.

2007 wurde durch Mondelez, der wohl größte Konkurrent des Lebensmittelunternehmens Nestle, ein Nichtigkeitsantrag hinsichtlich der Markeneintragung gestellt.

2012 wies das EUIPO diesen Antrag in vollem Umfang zurück. Das EUIPO begründete die Entscheidung damit, dass Nestlés Kit-Kat-Riegel Unterscheidungskraft erlangt habe und die Eintragung der Marke bestehen bleibt.

Die Beschwerde von Mondelez vor dem EUIPO war erfolglos.

Vor dem EuG beantragte Mondelez nun die Aufhebung der Entscheidung des EUIPO.

Worum geht es im Kern des Streits?

Im Kern dreht sich der Rechtsstreit um die Frage ob die Form des Schokoriegels "Kit Kat" markenrechtlich zu schützen ist. Laut EuG hat das Markenamt zwei rechtliche Fehler gemacht.

Im Europäischen Recht regelt eine Verordnung den Schutz von Marken. Die sogenannte Unionsmarke dient wie die nationale Marke (auch Markenzeichen genannt) dazu, Waren und Dienstleistungen eines Unternehmens von konkurrierenden Waren und Dienstleistungen anderer Unternehmen zu unterscheiden.

Entscheidung des EuG

Zum einen sei die Marke Kit Kat für zu viele unterschiedliche Untergruppen eingetragen worden, so das Gericht. 2006 erfolgte die Eintragung in die Klasse "Bonbons, Bäckereierzeugnisse, feine Backwaren, Kleingebäck, Kuchen und Waffeln". Diese Eintragung ist aber nur dann möglich, wenn die Marke auch unter sämtliche Untergruppen fällt. Das Markenamt habe aber nicht genau genug geprüft, ob Kit-Kat hinsichtlich aller Untergruppen markenrechtlicher Schutz zu Gute kommen darf.

Das EuG geht davon aus, dass nur hinsichtlich der Untergruppen "Bonbons" und "Kleingebäck" die Eintragungsvoraussetzungen erfüllt sind, da die Marke auch nur für diese Untergruppen benutzt wird.

Zum anderen folgte das EuG dem Argument von Mondelez in dem Verfahren, Nestlé habe keinen Nachweis darüber erbringen können, dass die Marke Kit Kat Unterscheidungskraft im Unionsgebiet erlangt hat.

Das Gericht bestätigte, dass der Nachweis der durch Benutzung erlangten Unterscheidungskraft für alle Mitgliedstaaten durch das Markenamt erfolgen muss.

Das EuG ist also der Ansicht, dass es nicht klar ist ob Kit-Kat tatsächlich in allen Mitgliedsstaaten bekannt ist. Somit muss das Markenamt nun erneut über den Bestand der Marke Kit Kat befinden.

 

 

Im Folgenden finden Sie das Urteil des Europäischen Gerichts vom 15. Dezember 2016 in Englischer Sprache:

 

Europäisches Gericht

Urteil

15.12.2016

Az.: T-112/13

In Case T‑112/13,

Mondelez UK Holdings & Services Ltd, formerly Cadbury Holdings Ltd, established in Uxbridge (United Kingdom), represented by T. Mitcheson QC, P. Walsh, J. Blum, and S. Dunstan, Solicitors, and D. Byrne, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Société des produits Nestlé SA, established in Vevey (Switzerland), represented initially by G. Vos, M. Bakker and J. van den Berg, lawyers, and subsequently by G. Vos, S. Malynicz QC, T. Scourfield and T. Reid, Solicitors,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 11 December 2012 (Case R 513/2011-2), relating to invalidity proceedings between Cadbury Holdings and Société des produits Nestlé,

THE GENERAL COURT (Fifth Chamber),

composed of A. Dittrich, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,

Registrar: M. Marescaux, Administrator,

having regard to the application lodged at the Court Registry on 19 February 2013,

having regard to the response of EUIPO lodged at the Court Registry on 15 May 2013,

having regard to the response of the intervener lodged at the Court Registry on 30 May 2013,

having regard to the reply lodged at the Court Registry on 3 September 2013,

having regard to the rejoinder of EUIPO lodged at the Court Registry on 26 November 2013,

having regard to the rejoinder of the intervener lodged at the Court Registry on 26 November 2013,

having regard to the order of 15 May 2014 staying the proceedings,

having regard to the Court’s written question to the parties of 7 October 2015,

having regard to the observations lodged by the parties at the Court Registry on 20, 21 and 22 October 2015,

further to the hearing on 4 May 2016,

gives the following

Judgment

Background to the dispute

On 21 March 2002, the intervener, Société des produits Nestlé SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

Registration as a mark was sought for the following three-dimensional mark:

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The goods in respect of which registration was sought are in Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

An objection was raised by EUIPO with regard to some of the goods in respect of which registration had been sought, namely ‘chocolate, chocolate products, confectionery, candy’. Following that objection, the EU trade mark application was published in Community Trade Marks Bulletin No 3/2006 of 16 January 2006, and the mark was registered as an EU trade mark on 28 July 2006 under No 2 632 529 in respect of the goods in Class 30 corresponding to the following description: ‘Sweets; bakery products, pastries, biscuits; cakes, waffles’.

On 23 March 2007, Cadbury Schweppes plc (subsequently Cadbury Holdings Ltd, now 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.

On 11 January 2011, the Cancellation Division gave the decision declaring the mark invalid.

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 contested decision’), the Second Board of Appeal of EUIPO upheld the appeal and annulled the Cancellation Division’s decision.

First of all, the Board of Appeal considered that the Cancellation Division had been fully entitled to conclude that the contested trade mark, consisting of an excessively simple shape and having no distinctive element enabling consumers of the goods in question to identify the commercial origin of those goods, was devoid of distinctive character in relation to those goods within the meaning of Article 7(1)(b) of Regulation No 207/2009.

Next, regarding distinctive character acquired through use, the Board of Appeal considered that the intervener had shown that the contested trade mark had been used in almost all of the relevant territory of the European Union, covering 14 of the 15 Member States in its composition at the time under consideration, and that, as a consequence of such use, almost 50% of the public of those Member States, representing almost 90% of the population of the Union, identified the contested trade mark as indicating the commercial origin of a product having the shape of that mark which was part of the category of goods in question, namely sweets, bakery products, pastries, biscuits, cakes and waffles. It therefore concluded that the contested trade mark had acquired distinctive character through the use that had been made of it within the European Union.

Lastly, the Board of Appeal stated, having regard to the essential characteristics of the contested trade mark, namely four identical trapezoidal bars aligned together on a rectangular base, that that mark did not consist exclusively of the shape of the product, technically causal of, and sufficient to obtain, the intended technical result. Consequently, it concluded that the contested trade mark was not caught by the prohibition laid down in Article 7(1)(e)(ii) of Regulation No 207/2009.

Forms of order sought

(...)

Law

In support of the action, the applicant raises three pleas in law. The first plea alleges infringement of Article 52(2) of Regulation No 207/2009, read in conjunction with Article 7(3) of that regulation. The second plea alleges a failure to give a decision regarding the grounds of invalidity set out in Article 7(1)(c) and (d) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) of that regulation. The third plea alleges infringement of Article 52(1)(a) and Article 7(1)(e)(ii) of the regulation concerned.

First plea in law: infringement of Article 52(2) of Regulation No 207/2009, read in conjunction with Article 7(3) of that regulation

By its first plea in law, the applicant complains that the Board of Appeal infringed Article 52(2) of Regulation No 207/2009 and 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, namely sweets, bakery products, pastries, biscuits, cakes and waffles.

The first plea in law is divided into four parts. In the first part, the applicant argues that the contested trade mark was not used at all in the form in which it had been registered. In the second part, it submits that the contested trade mark was not used for all the goods in respect of which it was registered. In the third part, it asserts that the contested trade mark was not used as an indicator of origin and that the evidence is insufficient in that regard. In the fourth part, it claims that the contested trade mark has not acquired distinctive character throughout the European Union.

The Court considers it appropriate to begin by examining the second part of the first plea in law, before going on to examine the first, third and fourth parts.

Second part of the first plea in law, concerning the lack of use of the contested trade mark for all the goods in question

The applicant considers that the Board of Appeal incorrectly concluded that the contested trade mark had acquired distinctive character through use for the goods in respect of which it had been registered. According to the applicant, the mark was used only for chocolate, chocolate products and confectionery. However, registration of that mark was refused for those goods, because the mark in question was considered to be devoid of distinctive character in respect of those goods. The applicant therefore submits that the Board of Appeal erred in applying Article 52(2) of Regulation No 207/2009 to the facts of the present case.

EUIPO and the intervener dispute the applicant’s arguments, contending, in essence, that the contested trade mark was used in respect of goods that were globally identical or very similar to those for which it was registered, which all belong to a homogenous category of goods, namely sweet snacks.

In the first place, it should be borne in mind that, according to settled case-law, distinctive character, whether inherent or acquired through use, must be assessed in relation, on the one hand, to the goods or services in respect of which registration has been sought and, on the other, to the presumed perception of the mark by an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect (judgments of 18 June 2002, Philips, C‑299/99, EU:C:2002:377, paragraphs 59 and 63, and of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 25).

In the present case, in paragraph 33 of the contested decision, the Board of Appeal observed that the goods in question were sweets, bakery products, pastries, biscuits, cakes and waffles, in respect of which the contested trade mark had been registered. According to the Board of Appeal, they were all sweet, fast-food products intended for everyday consumption by the general public.

That conclusion of the Board of Appeal, which, moreover, has not been disputed by the parties, must be upheld: the goods in question are intended for the general public, who can find them in a wide range of shops at relatively low prices and whose degree of attentiveness is therefore not high with regard to those goods.

In the second place, it should be borne in mind that, according to settled case-law, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the sub-category or sub-categories containing the goods or services for which the trade mark has actually been used (judgments of 14 July 2005,Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45; of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23; and of 16 June 2010, Kureha v OHIM — Sanofi-Aventis (KREMEZIN), T‑487/08, not published, EU:T:2010:237, paragraph 56).

However, according to that same line of authority, although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not result in the proprietor of such a trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. In that regard, it should be observed that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration (see judgment of 16 June 2010, KREMEZIN, T‑487/08, not published, EU:T:2010:237, paragraph 57 and the case-law cited).

That case-law, developed in connection with the concept of genuine use of a mark under Article 42(2) and (3) of Regulation No 207/2009, may be applied in the present case as regards the use of the contested trade mark which is invoked in order to establish the distinctive character of that mark under Article 52(2) of that regulation, read in conjunction with Article 7(3) thereof (see, to that effect, judgment of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraphs 33 and 34).

It is therefore necessary to examine whether the Board of Appeal was correct to consider that the product in respect of which the intervener has claimed use of the contested trade mark covers all the goods for which that mark was registered, namely sweets, bakery products, pastries, biscuits, cakes and waffles.

In the present case, in paragraphs 60 to 92 of the contested decision the Board of Appeal examined the evidence submitted by the intervener relating to the use of the contested trade mark, which consists, as a three-dimensional mark, of the appearance of the product itself as reproduced in paragraph 2 above, namely four trapezoidal bars aligned on a rectangular base. That product is known as ‘Kit Kat 4 fingers’.

Specifically, in paragraph 72 of the contested decision the Board of Appeal analysed the nature of the product in question in relation to the goods in respect of which the contested trade mark had been registered.

In that regard, first, the Board of Appeal took into account the advertising material submitted by the intervener that shows one of the four bars, broken, the internal composition of which is visible.

Secondly, the Board of Appeal observed that the advertising material used when the product in question was first launched, which had taken place in the United Kingdom, described that product as a sort of chocolate bar or candy bar, mentioning ‘four crisp wafers ..., baked in the oven and moulded into a block ...’ and the fact that they were ‘[covered with the] finest ... chocolate’.

Thirdly, in paragraph 72 of the contested decision the Board of Appeal noted that the surveys on which the intervener had relied in order to demonstrate the distinctive character acquired through use of the contested trade mark had been carried out by presenting the product to respondents as a ‘sweet’, a ‘candy’ or a ‘biscuit’.

Fourthly, the Board of Appeal observed that a company specialising in market research which collected the sales data for consumer goods from retail outlets defined the segment in question in each country where the research had been conducted as comprising chocolate bars, light chocolate snacks, candy bars and bitesizes, bars or chocolate confectionery bars.

Accordingly, in paragraph 72 of the contested decision the Board of Appeal concluded that, taking into account the composition of the product in question and its production process, it might be included in any of the categories of goods in question, namely sweets, bakery products, pastries, biscuits, cakes and waffles.

In the first place, it is necessary to point out, like the Cancellation Division, that the goods in question are not marketed in isolation, but together in a larger range of sweet fast-foods intended for consumption during short breaks, such as sweets, bakery products, pastries, biscuits, cakes and waffles. It is common ground that confectionery products, such as the goods in question, are sold in specific sections in retail outlets or snack shops. However, it is also common ground that, within the category of confectionery products, there are sub-categories capable of being viewed independently, including those for which the intervener has claimed use of the contested trade mark, namely sweets, bakery products, pastries, biscuits, cakes and waffles.

In the second place, as the Board of Appeal correctly pointed out, it should be noted that the product in question was presented during the surveys conducted in Denmark, Spain, France, Italy, the Netherlands, Finland, Sweden, and the United Kingdom as a ‘sweet’, a ‘candy’ or a ‘biscuit’, those being the terms used in the survey reports, drawn up in English. Without prejudice to the probative value of those surveys for the purposes of establishing the distinctive character acquired through use of the contested trade mark, it should be noted that a significant proportion of the persons targeted by those surveys recognised the product in question which had been described as a ‘sweet’, a ‘candy’, or a ‘biscuit’.

In the third place, while it is true that chocolate, as the ingredient covering the product in question, is obvious simply from looking at that product, it is none the less apparent from the case file, as was correctly noted by the Board of Appeal, that the product known as ‘Kit Kat 4 fingers’ was marketed by highlighting its internal composition, based on four wafers or crunchy biscuits.

Indeed, the printed advertising materials submitted by the intervener in respect of Belgium, Denmark, Germany, Greece, France, Italy, Austria, Finland, Sweden and the United Kingdom partially show the internal composition of the product in question, namely the four crisp wafers. Similarly, the audiovisual materials submitted by the intervener, which relate to television commercials for Belgium, Denmark, Germany, Greece, Spain, France, Italy, the Netherlands, Austria, Portugal, Finland, Sweden and the United Kingdom, contain images showing the internal composition of that product and, in some cases, describing that product as consisting of chocolate-covered wafers or crunchy biscuits. Those findings are confirmed by the historical material submitted by the intervener indicating that, when it was first launched, the product was described as consisting of four crisp wafers, baked in the oven and moulded into a block.

However, it cannot be held that the product in question, as marketed, also falls under the categories of goods consisting of bakery products, pastries, cakes and waffles. None of the evidence taken into consideration by the Board of Appeal establishes use of the contested trade mark in respect of those goods. In that regard, the composition of the product in question and its normal manufacturing process are not relevant for the purposes of establishing how the mark was used when that product was marketed.

Therefore, under the case-law cited in paragraph 26 above, 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 such as bakery products, pastries, cakes and waffles.

Accordingly, 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.

The second part of the first plea in law must therefore be upheld as regards bakery products, pastries, cakes and waffles and the other parts of that plea must be analysed only with regard to sweets and biscuits.

First part of the first plea in law, concerning the lack of use of the contested trade mark in the form in which it was registered

The applicant claims that the Board of Appeal failed to examine whether the contested trade mark had been used in the form in which it had been registered. It thus calls in question the possibility that, in the present case, the distinctive character of the contested trade mark may result from its being used with other signs.

In that regard, the applicant emphasises that the contested trade mark has not been used at all in the form in which it has been registered. According to the applicant, although, in principle, the distinctive character of a trade mark may result from its use in conjunction with another trade mark, it is apparent from the facts of the present case that the dominance of the word mark KIT KAT is so great that it is the sole source of ‘any alleged distinctive character acquired’.

EUIPO disputes all the applicant’s arguments.

For its part, the intervener notes that it is fully acknowledged in case-law that a trade mark may acquire distinctive character through its use in conjunction with other distinctive elements and recalls that, according to market research, almost 50% of the general public in the European Union spontaneously recognises the unmarked four-finger shape as an indication of the commercial origin of the product.

In that regard, it should be borne in mind that, pursuant to Article 4 of Regulation No 207/2009, an EU trade mark may consist of the shape of goods or their packaging provided that it is capable of distinguishing the goods of one undertaking from those of other undertakings.

Under Article 7(3) of Regulation No 207/2009, the absolute grounds for refusal referred to in Article 7(1)(b), (c) and (d) of that regulation are not to be a bar to the registration of a trade mark if that mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use that has been made of it.

In the same vein, Article 52(2) of Regulation No 207/2009 provides, inter alia, that, where the EU trade mark has been registered in breach of the provisions of Article 7(1)(b) of that regulation, it may nevertheless not be declared invalid if, in consequence of the use that has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

In that regard, it has been held that a three-dimensional mark could in certain circumstances acquire distinctive character through use even if it was used in conjunction with a word mark or a figurative mark. Such is the case where the mark consists of the shape of the product or its packaging and where they systematically bear a word mark under which they are marketed (judgment of 22 June 2006, Storck v OHIM, C‑24/05 P, EU:C:2006:421, paragraph 59).

The Court of Justice has also emphasised, concerning the acquisition of distinctive character through use, that the identification, by the relevant class of persons, of the product or service as originating from a given undertaking had to be as a result of the use of the mark as a trade mark (judgments of 18 June 2002, Philips, C‑299/99, EU:C:2002:377, paragraph 64, and of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 26). However, the use of the mark as a trade mark does not necessarily require the mark in respect of which registration is sought to have been used independently (judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraphs 26 and 27). Indeed, it is common ground that a product may bear several marks at the same time.

Such identification, and thus acquisition of distinctive character, may be as a result of use both as part of a registered trade mark or a component thereof and of use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceives the product or service, designated exclusively by the mark applied for, as originating from a particular undertaking (judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 30). That approach has been clearly confirmed by the case-law of the Court (judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 49).

Lastly, in paragraph 66 of the judgment of 16 September 2015, Société des Produits Nestlé (C‑215/14, EU:C:2015:604), the Court of Justice considered that it was necessary to assess whether distinctive character had been acquired through use in a way that was both rigorous and precise. The trade mark applicant must prove that that mark alone, as opposed to any other trade mark which may also be present, indicates the commercial origin of the goods.

It is necessary to examine, in the light of the

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