A Good Break – ECJ takes opportunity to clarify trade mark evidentiary requirements

30th August 2018

The European Court of Justice (“ECJ”) has recently delivered a judgment that clarifies the nature of evidence required to show that a trade mark has acquired “distinctive character” through use in the EU, thereby allowing for registration under Article 7(3) of Regulation (EC) No 207/2009 (the “Regulation”).  

The effect of the Judgment is that the case is referred back to the Board of Appeal of the EU Intellectual Property Office (“EUIPO”), to conduct a de novo assessment of Nestle’s evidence supporting its registration of the Kit Kat 3-D sign as a trade mark in 2006 (which Cadbury’s subsequently asked the EUIPO to declare invalid in 2007). 


The question being considered by the ECJ on appeal from the General Court of the EU, was whether it must be shown that a mark, to be registered in accordance with Article 7(3), has acquired distinctive character in each individual Member State, or merely in a “significant part” of the EU. 

The ECJ observed that Article 7(3) had to be read in light of Article 1(2) of the Regulation which states that an EU trade mark is to have unitary character and is to have equal effect throughout the EU.  It concluded that Article 7(3) requires evidence capable of establishing that the mark had acquired distinctive character through use throughout the Member States of the EU. 

The ECJ has avoided an impractical standard of proof which would have made it unduly burdensome for many brand owners to comply with.


Importantly, however, the ECJ clarified that nothing in the Regulation requires separate evidence to be offered in relation to each individual Member State.  The Court then gave examples of situations where particular evidence could be relevant to several Member States, or even the whole of the EU.  These included where economic operators had grouped several Member States together and treated them as if they were the same national market e.g. for distribution or marketing strategy purposes.  The Judgment also noted the possibility that due to geographic, cultural or linguistic proximity between two Member States, the public of the first might have enough knowledge of the products and services in market of the second.

The ECJ has therefore avoided an impractical standard of proof which would have made it unduly burdensome for many brand owners to comply with.  We expect that the decision will therefore be well-received by the market.

 For more information please contact Andrew Terry, Daniel Prim or Naz Gauri.

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