Provisional text

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

15 December 2016(*)

(EU trade mark — Invalidity proceedings — Three-dimensional mark — Shape of a chocolate bar — Absolute ground for refusal — No distinctive character — Distinctive character acquired through use — Article 7(1)(b) and (3) of Regulation (EC) No 207/2009 — Article 52(1) and (2) of Regulation No 207/2009)

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

1        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)).

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

3        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.

4        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’.

5        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.

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

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

8        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.

9        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.

10      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.

11      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

12      The applicant claims that the Court should:

–        annul the contested decision, except in so far as the Board of Appeal stated that the contested trade mark was devoid of inherent distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009;

–        order EUIPO to pay the costs of the present proceedings and order the intervener to pay the costs of the proceedings before EUIPO.

13      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

14      The intervener contends that the Court should:

–        annul the contested decision in so far as the Board of Appeal indicated that the contested trade mark was devoid of inherent distinctive character under Article 7(1)(b) of Regulation No 207/2009;

–        uphold the remainder of the contested decision in full;

–        order the applicant to pay the costs.

15      At the hearing, the applicant explained that it was withdrawing the part of its first head of claim concerning the inherent distinctive character of the contested trade mark. The Court took note of that withdrawal in the minutes of the hearing.

16      Similarly, at the hearing, the intervener withdrew its first head of claim concerning the Board of Appeal’s statement that the four-bar shape was devoid of inherent distinctive character under Article 7(1)(b) of Regulation No 207/2009. The Court took note of that withdrawal in the minutes of the hearing.

 Law

17      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

18      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.

19      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.

20      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

21      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.

22      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.

23      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).

24      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.

25      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.

26      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).

27      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).

28      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).

29      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.

30      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’.

31      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.

32      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.

33      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’.

34      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’.

35      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.

36      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.

37      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.

38      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’.

39      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.

40      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.

41      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.

42      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.

43      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.

44      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

45      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.

46      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’.

47      EUIPO disputes all the applicant’s arguments.

48      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.

49      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.

50      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.

51      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.

52      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).

53      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.

54      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).

55      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.

56      It is necessary to examine, in the light of the foregoing considerations, the findings of the Board of Appeal relating to the possibility that the distinctive character of the contested trade mark may result from its use with other signs.

57      First of all, it should be borne in mind that, in the present case, the relevant public is the general public and that its degree of attentiveness is not high in relation to the goods in question.

58      Next, it must be pointed out that, with regard to the goods in question, the contested trade mark is in the form of a three-dimensional sign which consists, according to the representation reproduced in paragraph 2 above, of four trapezoidal bars aligned on a rectangular base. As the Board of Appeal noted without being contradicted by the applicant on that subject, the bar itself has an elongated shape and is considered to be a shape which naturally comes to mind for the goods in question.

59      Lastly, it is true that it follows from the analysis carried out by the Board of Appeal that the proof of acquisition of distinctive character through use of the contested trade mark is based, to a large extent, on the identification of the commercial origin by making reference to the product known as ‘Kit Kat 4 fingers’ and, hence, to the word mark KIT KAT. However, as the Board of Appeal correctly observed in, inter alia, paragraphs 63 to 70 of the contested decision, each of the surveys examined showed that, when only the shape of the product in question was shown to respondents, a considerable percentage of them spontaneously and immediately associated that shape with the word mark KIT KAT or the intervener.

60      Consequently, in the contested decision, the Board of Appeal relied, for the purposes of verifying whether the contested trade mark had acquired distinctive character, on the use of that trade mark in conjunction with, inter alia, the word mark KIT KAT.

61      Nevertheless, contrary to the applicant’s assertions, such an approach remains consistent with the case-law relating to Article 7(1)(b) and (3) of Regulation No 207/2009.

62      Indeed, according to case-law, 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 (see, to that effect, judgment of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraphs 50 to 52).

63      Moreover, the approach adopted by the Board of Appeal in the present case is also consistent with the concept of use of the mark as a trade mark, which — according to the Court of Justice — corresponds to the use of the mark for the purposes of the identification by the relevant class of persons of the product or service as originating from a particular undertaking (judgment of 22 June 2006, Storck v OHIM, C‑24/05 P, EU:C:2006:421, paragraph 61).

64      In the light of the foregoing, the first part of the first plea in law must be rejected.

 Third part of the first plea in law, concerning the lack of use of the contested trade mark as an indicator of origin and the insufficient evidence provided in that regard

65      The applicant claims that the intervener failed to provide sufficient evidence to establish that the contested trade mark had acquired distinctive character through the use that had been made of it, as the surveys submitted by the intervener had not asked the relevant questions and had led to misleading results. According to the applicant, the Board of Appeal failed to verify, in essence, whether the goods had been identified because of the mark and whether consumers perceived the contested trade mark as a trade mark. First, the public identifies the chocolate bar marketed by the intervener because of its extensive and constant use of the word mark KIT KAT, both on the packaging of the product known as ‘Kit Kat 4 fingers’ and on the product itself. Secondly, as the contested trade mark simply represents the shape of the product in question, the relevant public cannot perceive it as a trade mark. Thirdly, in reality, consumers are never presented with an unpackaged and unbranded product in the shape of the mark. The Board of Appeal therefore incorrectly presumed that the recognition of the product in question by the survey respondents was equivalent to the mark acquiring distinctive character and being recognised as an indicator of origin. This was also the United Kingdom Intellectual Property Office’s conclusion when it refused to register that mark.

66      EUIPO and the intervener dispute all the applicant’s arguments.

67      It should be borne in mind that, according to case-law, in the circumstances referred to in Article 7(3) of Regulation No 207/2009, the fact that the sign which constitutes the mark in question is actually perceived by the relevant public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b), (c) and (d), which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader (judgments of 21 April 2010, Schunk v OHIM (Representation of part of a chuck), T‑7/09, not published, EU:T:2010:153, paragraph 38, and of 22 March 2013, Bottega Veneta International v OHIM (Shape of a handbag), T‑409/10, not published, EU:T:2013:148, paragraph 74).

68      It is also apparent from case-law that, for a mark to have acquired distinctive character through use, it is necessary that at least a significant proportion of the relevant public, by virtue of that mark, identifies the goods or services concerned as originating from a particular undertaking. However, the circumstances in which that requirement for acquisition of distinctive character through use may be regarded as satisfied cannot be established solely by reference to general, abstract data such as predetermined percentages (judgments of 21 April 2010, Representation of part of a chuck, T‑7/09, not published, EU:T:2010:153, paragraph 39, and of 22 March 2013, Shape of a handbag, T‑409/10, not published, EU:T:2013:148, paragraph 75).

69      Furthermore, in assessing, in a particular case, whether a mark has acquired distinctive character through use, account must be taken of factors such as the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the significance of the investments by the undertaking to promote it; the proportion of the relevant class of persons who, because of the mark, identify the product as originating from a particular undertaking; and statements from chambers of commerce and industry or other professional associations. Those factors must be assessed globally (judgment of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraphs 49 and 51).

70      If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identifies the product as originating from a particular undertaking because of the mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) of Regulation No 207/2009 is satisfied (judgments of 21 April 2010, Representation of part of a chuck, T‑7/09, not published, EU:T:2010:153, paragraph 41, and of 22 March 2013, Shape of a handbag, T‑409/10, not published, EU:T:2013:148, paragraph 77).

71      According to case-law, the distinctive character of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration has been sought and in the light of 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 21 April 2010, Representation of part of a chuck, T‑7/09, not published, EU:T:2010:153, paragraph 42, and of 22 March 2013, Shape of a handbag, T‑409/10, not published, EU:T:2013:148, paragraph 78).

72      In that context, the competent authority must make an overall assessment of the evidence that the sign applied for has come to identify the product concerned as originating from a particular undertaking (see, to that effect, judgment of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 49).

73      It is necessary to examine, in the light of the foregoing considerations, the Board of Appeal’s assessment of the evidence submitted by the intervener and of whether the contested trade mark has acquired distinctive character as a result. Lastly, it is necessary to examine the relevance of the decision of the United Kingdom Intellectual Property Office of 20 June 2013.

–       The evidence relating to the acquisition of distinctive character through use of the contested trade mark

74      It is necessary to bear in mind from the outset the findings made in paragraphs 57 and 58 above, pursuant to which the contested trade mark consists, according to the representation reproduced in paragraph 2 above, of four trapezoidal bars aligned on a rectangular base, the shape in which the product known as ‘Kit Kat 4 fingers’ is marketed, and that the relevant public consists of the general public and does not have a high degree of attentiveness in relation to the product in question.

75      According to the applicant, the evidence submitted by the intervener, namely documents relating to the sales of goods in the shape of the contested trade mark and to the results of surveys, do not prove that that mark has acquired distinctive character through the use that has been made of it. Furthermore, the surveys are put together in such a way as to lead to misleading results. Lastly, the applicant considers that that evidence shows that similarly or identically shaped goods originating from other producers have been and continue to be sold within the European Union.

76      In that regard, it should be borne in mind that, according to settled case-law, in order to be able to benefit from Article 52(2) of Regulation No 207/2009, the mark in respect of which a declaration of invalidity is sought must have acquired distinctive character at least between the date of its registration and that of the application for a declaration of invalidity. It is for the proprietor of the mark to produce appropriate and sufficient evidence to show that the mark has acquired such distinctive character (order of 2 December 2009, Powerserv Personalservice v OHIM, C‑553/08 P, EU:C:2009:745, paragraph 91; see also judgment of 9 March 2011, Longevity Health Products v OHIM — Performing Science (5 HTP), T‑190/09, not published, EU:T:2011:78, paragraph 46 and the case-law cited).

77      In addition, in the light of the case-law cited in paragraph 69 above, it should be emphasised, first, that the list of factors capable of showing that the mark has come to identify the product or service concerned is not exhaustive and, second, that those factors must be assessed globally. Moreover, the fact that other goods identical or similar in shape to the mark in question are sold within the market in question is irrelevant.

78      In the first place, regarding the surveys analysed by the Board of Appeal in paragraphs 63 to 83 of the contested decision, those surveys were carried out by companies specialising in market research in the territory of 10 Member States, namely Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the United Kingdom, whereas there were 15 Member States in the European Union at the date of filing the application for registration.

79      The applicant questions whether the surveys are objective and adds that, in the context of trade mark application No 2 552 692 in the United Kingdom, the United Kingdom Intellectual Property Office, in its decision of 20 June 2013 (Annex C2), rejected as devoid of probative value one of the surveys submitted by the intervener concerning the British market.

80      In that regard, it is sufficient to note that the intervener relied on surveys conducted by specialist undertakings whose independence and professionalism have not been challenged in the present action. In any event, the applicant has in no way explained how the wording of the questions in those surveys was biased. It has confined itself to asserting that the premiss of those surveys was fundamentally artificial, given that the surveys concerned invited participants to speculate as to the origin of the product represented. In addition, the applicant’s assertion that it would have been more relevant to ask respondents about a shape identical to the contested trade mark and marketed under a different brand cannot succeed, having regard to the case-law cited in paragraphs 67 to 69 and 76 above.

81      Furthermore, although some of the surveys in question were carried out on dates subsequent to those of the application for registration and the application for a declaration of invalidity, the Board of Appeal was fully entitled to take the results into consideration, in so far as they enabled it to draw conclusions regarding the use of the contested trade mark prior to those dates (see, to that effect, order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 31).

82      In the second place, regarding the taking into account by the Board of Appeal of the research, compiled by a company specialising in market research, relating to the market shares of the product known as ‘Kit Kat 4 fingers’ (‘Table N’), it should be noted that the Board of Appeal was right to take those data into account: the market shares held by a mark are an indication which may be relevant for the purposes of assessing whether that mark has acquired distinctive character through use (judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 76).

83      In the present case, Table N provides detailed information regarding the market shares held by the goods designated by the contested trade mark in the territory of 11 Member States, namely Belgium, Ireland, Greece, Spain, France, Italy, the Netherlands, Austria, Portugal, Sweden and the United Kingdom during the years 2005, 2006 and 2007. It also provides an assessment of the extensiveness of the use of that mark and how visible it is to the relevant public in those territories. In that regard, the same considerations as those indicated in paragraph 81 above apply to the data in Table N corresponding to dates subsequent to those of the application for registration of the contested trade mark and the application for a declaration of invalidity.

84      In addition, it should be emphasised that the market segment as established and measured by a company specialising in market research, while displaying certain variations between the various Member States under analysis, includes broad categories of goods which include not only chocolate bars, but also other types of candy bar and ‘impulse buys’ sold, inter alia, at the checkouts of retail outlets or even snack bars. Thus, the data in Table N also enable the relative proportion represented by the sales of the goods designated by the contested trade mark to be assessed in relation to the total sales of goods in those categories which, as has been noted in paragraph 37 above, are available to consumers in specific sections in retail outlets or snack shops.

85      Furthermore, it should be noted that Table N also contains information relating to the position of the product known as ‘Kit Kat 4 fingers’ in a ranking determined on the basis of the market shares of various goods.

86      In the third place, regarding turnover and advertising expenditure, the Board of Appeal was fully entitled to note, in paragraph 68 of the contested decision, that, in so far as they constitute the intervener’s internal data, they cannot, as such, be used to establish distinctive character acquired through use of the contested trade mark.

87      However, it must be observed that the turnover for the goods marketed under the contested trade mark may constitute secondary evidence which, assessed in conjunction with other evidence, may be taken into account in order to establish distinctive character acquired through use of that mark.

88      In addition, although proof of distinctive character acquired through use of a mark need not necessarily be based on the advertising of the mark in question, the amount of publicity represented by the advertising investment in promoting the mark may be relevant for assessing whether that mark has acquired distinctive character through use, in particular where such information is accompanied by indications as to the share which those costs represent in the advertising expenditure market for the product concerned (judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraphs 77 and 78).

89      In the fourth place, concerning the advertising material submitted by the intervener, it should be noted that the Board of Appeal was fully entitled to consider, in paragraphs 85 and 86 of the contested decision, that, as far as Belgium, Ireland, Greece and Portugal were concerned, that material, in and of itself and without any additional information regarding the advertising campaigns in question, such as the intensity of their circulation, was not conclusive as regards the impact of that advertising activity.

90      However, although statements and information relating to efforts to promote a mark, in particular those originating from the undertaking concerned, are not capable in themselves of establishing the acquisition of distinctive character through use of that mark, they may be taken into consideration as an indication of the degree of awareness which the relevant public has of the mark in question and the date from which the relevant public can be regarded as having become accustomed to that mark. Moreover, such statements and information, when taken together with other evidence, may be relevant for the purposes of assessing whether the mark in question has acquired distinctive character through the use that has been made of it among the relevant public.

91      In the fifth place, as is correctly contended by EUIPO and the intervener, it is necessary to take into consideration how long-standing use of the contested trade mark has been on the basis of the information submitted by the intervener in relation to the dates from which the product known as ‘Kit Kat 4 fingers’ has been present on the markets of the various Member States.

92      As is apparent from paragraph 10 of the contested decision, in the context of the invalidity proceedings the intervener submitted a list of the launch dates for the product in question, namely 1937 in the United Kingdom, the late 1940s in Ireland, the 1960s in Italy, the 1970s in France, 1972 in Germany, 1985 in Belgium, Denmark and Luxembourg, 1988 in Austria, 1989 in Greece and Spain, 1991 in Sweden, 1992 in the Netherlands, 1998 in Portugal and before 1999 in Finland.

93      In that regard, it should be borne in mind that, according to the case-law cited in paragraph 69 above, one of the factors that may be taken into consideration for the purposes of assessing, in a particular case, whether a mark has acquired distinctive character through use is how long-standing the use of that mark is.

94      In the light of the foregoing, it should be noted that the evidence examined in paragraphs 78 to 93 above constitutes relevant evidence which, when assessed globally, is capable of establishing that, in the eyes of the relevant public, the contested trade mark is perceived as an indication of the commercial origin of the goods in question.

–       The examination by the Board of Appeal of whether distinctive character has been acquired through use of the contested trade mark by virtue of that mark

95      First, it is necessary to bear in mind the findings made in paragraphs 60 and 61 above, according to which the Board of Appeal was fully entitled to rely, for the purposes of ascertaining whether the contested mark had acquired distinctive character, on the combined use of that mark with, inter alia, the word mark KIT KAT.

96      In addition, it should be noted that, in response to the written questions put by the Court on the subject of the significance of the judgment of 16 September 2015, Société des Produits Nestlé (C‑215/14, EU:C:2015:604), the parties adopted diametrically opposed positions.

97      The applicant interpreted the judgment of 16 September 2015, Société des Produits Nestlé (C‑215/14, EU:C:2015:604), as meaning that the recognition of a mark was no longer a sufficient basis for distinctive character acquired through use of that mark. On the contrary, it is necessary to show that that mark is perceived as indicating that the goods which it designates originate exclusively from a particular undertaking and from no other undertaking. Proof of mere recognition or association establishes only awareness of the use of the shape in question.

98      EUIPO and the intervener indicated that the Court had simply confirmed the well-established principle resulting from the earlier case-law stemming from, inter alia, the judgments of 12 February 2004, Koninklijke KPN Nederland (C‑363/99, EU:C:2004:86); of 7 July 2005, Nestlé (C‑353/03, EU:C:2005:432); and of 19 June 2014, Oberbank and Others (C‑217/13 and C‑218/13, EU:C:2014:2012), according to which it must be established that, as a result of the use of the mark in question, either as part of another registered trade mark or in conjunction with that trade mark, the relevant class of persons perceives the product or service, designated exclusively by the mark in question, irrespective of any other mark that may also be present, as originating from a particular undertaking.

99      In that regard, it must be emphasised that the fact that the relevant public has recognised the contested trade mark by referring to another mark which designates the same goods and is used in conjunction with the contested trade mark does not mean that the contested trade mark is not used as a means of identification in itself. The position would be different if the Court of Justice had found that, as suggested by the English referring court, the answer to the first question referred for a preliminary ruling in the judgment of 16 September 2015, Société des Produits Nestlé (C‑215/14, EU:C:2015:604), was that, in order to establish that distinctive character has been acquired, it is necessary to demonstrate that the consumer concerned relies on a mark in order to identify the commercial origin of the goods designated by that mark. However, the Court merely confirmed that, to that end, it was necessary to show whether the mark representing the shape of the product, when used independently of its packaging or of any reference to the word mark KIT KAT, serves to identify the product in question as being, without any possibility of confusion, the product known as ‘Kit Kat 4 fingers’, as was observed in point 52 of Advocate General Wathelet’s Opinion in Société des Produits Nestlé (C‑215/14, EU:C:2015:395).

100    Indeed, having emphasised that acquisition of distinctive character could be as a result of use both as part of a registered trade mark or a component thereof and of a separate mark in conjunction with a registered trade mark, the Court held that, in consequence of such use, the relevant class of persons had to actually perceive the product or service, designated exclusively by the mark applied for, as originating from a particular undertaking. It concluded that, regardless of whether the sign was used as part of a registered trade mark or in conjunction with the registered trade mark, the fundamental condition was that, as a consequence of that use, the sign for which registration as a trade mark was sought could serve to identify, in the minds of the relevant class of persons, the goods to which it related as originating from a particular undertaking (judgment of 16 September 2015, Société des Produits Nestlé, C‑215/14, EU:C:2015:604, paragraphs 64 and 65).

101    In those circumstances, the approach adopted by the Board of Appeal in paragraphs 63 to 70 of the contested decision, taking into account, inter alia, for the purposes of proving the distinctive character acquired through use of the contested trade mark, surveys showing the immediate and spontaneous attribution of the contested trade mark to the product bearing the word mark KIT KAT or the intervener, must be upheld.

102    Consequently, the applicant’s arguments that the public identifies the chocolate bar marketed by the intervener only because of its extensive and constant use of the word mark KIT KAT, both on the packaging of the product known as ‘Kit Kat 4 fingers’ and on the product itself, must be rejected. For the same reasons, the applicant’s arguments that the contested trade mark simply represents the shape of the product known as ‘Kit Kat 4 fingers’ cannot succeed.

103    Moreover, it should be noted that, 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 (see, to that effect, judgment of 22 June 2006, Storck v OHIM, C‑24/05 P, EU:C:2006:421, paragraphs 70 and 71). Thus, the applicant’s assertion regarding the issue of packaging is incorrect and, accordingly, cannot be upheld.

104    Secondly, as has been stated in paragraphs 78 to 94 above, 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 the product known as ‘Kit Kat 4 fingers’. Accordingly, the applicant’s assertions that the Board of Appeal failed to verify whether the goods are identified by virtue of the mark and whether consumers perceive that mark as a trade mark cannot be upheld.

105    Thirdly, as regards the applicant’s assertions that, first, the contested trade mark does not have distinctive character acquired through use and, second, consumers do not systematically associate that mark with the commercial origin of the goods designated by that mark, it should be borne in mind that, according to case-law, for a mark to have acquired distinctive character through use, it is necessary that at least a significant proportion of the relevant public, by virtue of that mark, identifies the goods or services concerned as originating from a particular undertaking (judgments of 21 April 2010, Representation of part of a chuck, T‑7/09, not published, EU:T:2010:153, paragraph 41, and of 22 March 2013, Shape of a handbag, T‑409/10, not published, EU:T:2013:148, paragraph 77).

106    Thus, it is apparent from the Board of Appeal’s analysis of the surveys produced by the intervener, in paragraphs 63 to 82 of the contested decision, that the Board of Appeal noted rates of recognition of the contested trade mark by consumers of 48% (in Denmark), 47.4% (in Germany), 48.5% (in Spain), 46% (in France), 44.8% (in Italy), 53% (in the Netherlands), 54% (in Austria), 62% (in Sweden) and 88% (in the United Kingdom). In addition, the Board of Appeal noted, in paragraph 81 of the contested decision, a rate of recognition of that mark by consumers in Finland of 30%.

107    In those circumstances, and without prejudging the merits of those conclusions, it should be noted that the Board of Appeal carried out an examination of whether the contested trade mark had acquired distinctive character by virtue of that mark and specifically substantiated its conclusions regarding that acquisition so far as Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the United Kingdom are concerned.

–       The decision of the United Kingdom Intellectual Property Office of 20 June 2013

108    Concerning the relevance of the decision of the United Kingdom Intellectual Property Office of 20 June 2013, in which it was concluded that it had not been established that the contested trade mark had acquired distinctive character through use in the United Kingdom, it should be borne in mind that, according to case-law, even though it is, admittedly, desirable for EUIPO to take into account decisions of national authorities concerning marks identical to those on which it has to give a decision, EUIPO is nevertheless not required to take those decisions into account, including decisions concerning identical marks, and, if it does take them into account, is not bound by those decisions (judgment of 15 July 2015, Australian Gold v OHIM — Effect Management & Holding (HOT), T‑611/13, EU:T:2015:492, paragraph 65).

109    Indeed, the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant European Union rules, so that EUIPO and, if appropriate, the EU judicature are not bound by a decision given in a Member State that the sign in question is registrable as a national trade mark. That is so even if such a decision was adopted under harmonised national legislation (judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47).

110    In any event, it must be pointed out that the decision of the United Kingdom Intellectual Property Office of 20 June 2013 was adopted after the contested decision and the Board of Appeal was therefore unable to take it into consideration.

111    Having regard to all of the foregoing, the third part of the first plea in law must be rejected.

 Fourth part of the first plea in law, concerning the lack of proof of distinctive character acquired through use of the contested trade mark throughout the European Union

112    Referring, in particular, to paragraph 74 of the contested decision, in which the Board of Appeal applied the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307), the applicant complains that the Board of Appeal did not correctly assess the territorial scope of the proof of the contested trade mark’s distinctive character acquired through use of that mark within the European Union. It recalls that, if a mark is found to be inherently non-distinctive throughout the European Union, it is throughout the European Union, on the date under consideration, that that mark must have acquired distinctive character through the use that has been made of it in order to be registrable under Article 7(3) of Regulation No 207/2009.

113    In addition, according to the applicant, even if the proof of distinctive character acquired through use of the contested trade mark does not have to be adduced in every Member State, the Board of Appeal erred in concluding that a finding of distinctive character in 5 of the 15 Member States was sufficient. Moreover, it complains that the Board of Appeal failed to examine whether the Cancellation Division had been correct to reject the possibility of extrapolating the data relating to use of that mark in those 5 Member States to the other 10 Member States.

114    EUIPO and the intervener dispute the applicant’s arguments, relying on the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307), in which the Court held that it is unreasonable for proof of acquisition of distinctive character to be adduced for each individual Member State. It follows that the acquisition of distinctive character must be substantiated for the European Union as a whole and not for the sum of its national markets. Such an interpretation is inherent in the very existence of the internal market, which has characteristics similar to those obtaining in a national market. In the context of a national registration, such registration cannot be refused if proof of acquisition of distinctive character is missing in respect of a region the relevance of which is limited both economically and geographically.

–       The date to be taken into consideration for the purposes of determining whether the contested trade mark has acquired distinctive character through use

115    It should be borne in mind that, for the purposes of applying Article 7(3) of Regulation No 207/2009, it must be established that the trade mark’s distinctive character was acquired through use prior to the date of filing the application for registration (judgment of 15 December 2005, BIC v OHIM (Shape of a lighter), T‑262/04, EU:T:2005:463, paragraph 66). That interpretation does not exclude the possibility that account may be taken, by the competent authority, of evidence which, although subsequent to the date of filing the application for registration, enables the drawing of conclusions regarding the situation as it was before that date (see, to that effect, judgments of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 71, and of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraphs 54 to 61).

116    In addition, Article 52(2) of Regulation No 207/2009 provides, inter alia, that, where an 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.

117    Accordingly, it must be found that the Board of Appeal was fully entitled to consider, in paragraph 59 of the contested decision, that the applicant was required to prove either that the contested trade mark had, prior to the date of filing the application for registration (21 March 2002), acquired distinctive character owing to the use that had been made of it, or that that the mark had acquired such character owing to the use that had been made of it between the date of its registration — 28 July 2006 — and the date of the application for a declaration of invalidity — 23 March 2007 — in the European Union in its composition at the time of filing the application for registration (see, to that effect, judgment of 10 December 2008, Bateaux mouches v OHIM — Castanet (BATEAUX MOUCHES), T‑365/06, not published, EU:T:2008:559, paragraph 37).

118    Consequently, the Board of Appeal correctly determined the date before which the contested trade mark had to have acquired distinctive character through use.

–       The extent of the territory in which distinctive character acquired through use of the contested trade mark must be shown

119    According to Article 1(2) of Regulation No 207/2009, the EU trade mark is to have a unitary character, which implies that it is to have equal effect throughout the European Union. It follows from the unitary character of the EU trade mark that, in order to be accepted for registration, a sign must have distinctive character throughout the European Union. Therefore, under Article 7(1)(b) of that regulation, read in conjunction with Article 7(2) thereof, a mark must not be registered if it is devoid of distinctive character in part of the European Union. It has been held that the part of the European Union referred to in Article 7(2) may, where appropriate, be comprised of a single Member State (see, to that effect, judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraphs 81 to 83; of 29 September 2010, CNH Global v OHIM (Combination of the colours red, black and grey for a tractor), T‑378/07, EU:T:2010:413, paragraph 45; and of 17 May 2011, Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM(υγεία), T‑7/10, not published, EU:T:2011:221, paragraph 40).

120    Article 7(3) of Regulation No 207/2009, which permits registration of signs which have acquired distinctive character through use, must be read in the light of that requirement. Thus, it follows from the unitary character of the EU trade mark that, in order to be accepted for registration, a sign must have distinctive character, whether inherent or acquired through use, throughout the European Union (judgment of 17 May 2011, υγεία, T‑7/10, not published, EU:T:2011:221, paragraph 41).

121    It is apparent from case-law that, in order for the registration of a trade mark to be accepted under Article 7(3) of Regulation No 207/2009, the distinctive character acquired through use of that trade mark must be demonstrated in the part of the European Union where it was devoid of such character under Article 7(1)(b), (c) and (d) of that regulation (judgments of 21 April 2010, Representation of part of a chuck, T‑7/09, not published, EU:T:2010:153, paragraph 40, and of 22 March 2013, Shape of a handbag, T‑409/10, not published, EU:T:2013:148, paragraph 76).

122    In addition, in the case of non-word marks, such as the mark under consideration in the present case, it is appropriate to assume that the assessment of the inherent distinctive character will be the same throughout the European Union, unless there is concrete evidence to the contrary (judgment of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottle without fluting), T‑411/14, EU:T:2016:94, paragraph 68). As the documents before the Court in the present case do not show that such evidence exists, it must be held that there is an absolute ground for refusal under Article 7(1)(b) of Regulation No 207/2009, with regard to the contested trade mark, throughout the European Union.

123    Given that, in the present case, it had been found that the contested trade mark was devoid of inherent distinctive character in the European Union (paragraph 9 above), that mark must therefore have acquired distinctive character through use throughout the European Union in order to be registrable under Article 7(3) of Regulation No 207/2009 (judgments of 29 April 2004, Eurocermex v OHIM (Shape of a beer bottle), T‑399/02, EU:T:2004:120, paragraph 47; of 10 March 2009, Piccoli v OHIM (Shape of a seashell), T‑8/08, not published, EU:T:2009:63, paragraphs 37 to 39; and of 17 December 2010, Chocoladefabriken Lindt & Sprüngli v OHIM (Shape of a chocolate rabbit), T‑395/08, not published, EU:T:2010:550, paragraph 53).

124    It should be noted that, in the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307), the Court of Justice initially, in paragraph 60, confirmed the settled case-law indicated in paragraph 123 above, according to which the mark must have acquired distinctive character through use throughout the European Union in order to be registrable under Article 7(3) of Regulation No 207/2009. However, subsequently, in paragraph 62 of that judgment, the Court clarified the scope of that requirement when it held that, ‘even if it [was] 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’.

125    Thus, the criterion to be applied is that of proof that the mark in respect of which registration is sought has acquired distinctive character through use throughout the territory of the European Union, and that acquisition must be ‘sufficiently’ proved in quantitative terms (judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraph 63).

126    In addition, according to case-law, although it must be proved that a mark has acquired distinctive character through use throughout the European Union, the same types of evidence do not have to be provided in respect of each Member State (judgment of 28 October 2009, BCS v OHIM — Deere (Combination of the colours green and yellow), T‑137/08, EU:T:2009:417, paragraph 39).

127    Furthermore, the Court has repeatedly held that there was insufficient proof of distinctive character acquired through use of a mark throughout the European Union where evidence was missing for certain Member States (judgments of 8 July 2009, Mars v OHIM — Ludwig Schokolade (Shape of a chocolate bar), T‑28/08, not published, EU:T:2009:253; of 30 September 2009, JOOP! v OHIM (!), T‑75/08, not published, EU:T:2009:374; and of 24 February 2016, Shape of a contour bottle without fluting, T‑411/14, EU:T:2016:94, paragraph 80).

128    In particular, in the judgment of 21 April 2015, Louis Vuitton Malletier v OHIM — Nanu-Nana (Representation of a grey chequerboard pattern) (T‑360/12, not published, EU:T:2015:214), while relying on the case-law developed in the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307), according to which it would be unreasonable to require proof of acquisition of distinctive character through use for each Member State, the Court considered that, since such acquisition had not been established for 12 of the 27 Member States constituting the European Union at the date of filing the application for registration of the mark in question, that mark could not be regarded as having acquired distinctive character through use throughout the European Union (see, to that effect, judgment of 21 April 2015, Representation of a grey chequerboard pattern, T‑360/12, not published, EU:T:2015:214, paragraphs 92, 93, 117 and 120).

129    Similarly, in paragraph 49 of the judgment of 16 March 2016, Työhönvalmennus Valma v OHIM (Shape of a game box with wooden blocks) (T‑363/15, not published, EU:T:2016:149), the Court considered, in essence, that proof of acquisition, by a trade mark, of distinctive character through use had not been adduced for the whole of the European Union, given that relevant evidence had been adduced in relation to only 4 of the 28 Member States concerned.

130    It is necessary to examine, in the light of the foregoing, whether the Board of Appeal correctly assessed whether distinctive character acquired through use of the contested trade mark throughout the European Union was sufficiently proved in quantitative terms by the intervener.

131    At the outset, it must be stated that, under Article 165(1) and (4) of Regulation No 207/2009, evidence of distinctive character acquired through use must be produced only for the States that were members of the European Union at the date of filing the application for registration of the contested trade mark, namely in the present case, the Union composed, as at 21 March 2002, of 15 Member States, as was correctly observed by the Board of Appeal in paragraph 59 of the contested decision.

132    Therefore, the applicant’s line of argument that, should the distinctive character acquired through use of the contested trade mark be confirmed, the intervener will acquire a very broad monopoly in 28 Member States even though it has established that distinctive character only in a much smaller number of Member States, cannot succeed.

133    In that regard, it is sufficient to recall that, under Article 165(4)(a) of Regulation No 207/2009, an EU trade mark may not be declared invalid on the absolute grounds for refusal laid down in Article 7 of that regulation, read in conjunction with Article 52 thereof, merely because of the accession of a new Member State.

134    In addition, it should be noted that, in paragraph 74 of the contested decision, the Board of Appeal inferred from the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307), that the question that had to be asked was whether a substantial proportion of consumers in the European Union as a whole had been exposed to the mark and had, as a result of that exposure, come to perceive the mark as an indication of the commercial origin of the goods designated by that mark, without it being necessary, in any event, to prove acquired distinctiveness everywhere.

135    It is stated in paragraph 75 of the contested decision that there cannot be a requirement to show distinctive character acquired through use of the mark Member State by Member State, just as there is no requirement to show distinctive character acquired by a national trade mark in each state, region, province or other administrative division of the Member State concerned.

136    Furthermore, in paragraph 77 of the contested decision, the Board of Appeal indicated that the lack of evidence regarding the recognition of the mark in a part of the internal market which, having regard to the specific conditions of that market, was not substantial, cannot render irrelevant the distinctive character acquired through use of that mark in the vast majority of that market.

137    Lastly, in paragraph 78 of the contested decision, the Board of Appeal considered that it would be unreasonable and disproportionate to ask the proprietor of a trade mark to devote significant amounts of money to collecting evidence of the distinctive character acquired through use of that mark in every corner of the internal market and to refuse to protect that mark, despite its having been proved that the mark in question was recognised in the vast majority of the territory of the European Union.

138    It must be held that that interpretation by the Board of Appeal concerning the extent of the territory in which it is necessary to establish distinctive character acquired through use of a mark is not entirely consistent with the conditions laid down in Article 7(3) of Regulation No 207/2009, as interpreted by case-law.

139    Indeed, as is apparent from the case-law cited in paragraphs 119 to 121 above, for the purposes of applying Article 7(3) of Regulation No 207/2009, in the case of a mark which does not have inherent distinctive character throughout the European Union, the distinctive character acquired through use of that mark must be shown throughout the territory of the European Union, and not only for a substantial part or the majority thereof. Furthermore, although, as was held by the Court of Justice in the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307, paragraph 62), there cannot be a requirement for proof of distinctive character acquired through use of that mark to be adduced for each individual Member State concerned, such proof may be adduced globally for all the Member States concerned or separately for different Member States or groups of Member States. Consequently, in the event that the evidence submitted does not cover part of the European Union, even a part which is not substantial or consists of only one Member State, it cannot be concluded that distinctive character has been acquired through use of the mark throughout the European Union.

140    In addition, concerning the Board of Appeal’s assertion in paragraph 74 of the contested decision that ‘the question that must be asked is whether a substantial proportion of consumers in the European Union as a whole have been exposed to the mark and have, as a result of that exposure, come to [perceive] the mark as an indication of commercial origin’ (see paragraph 134 above), the following points should be noted.

141    The Board of Appeal considered, in essence, that it was sufficient to show that a significant proportion of the relevant public throughout the European Union, merging all the Member States and regions, perceived a mark as an indication of the commercial origin of the goods designated by that mark.

142    However, that criterion is incorrect: the relevant question is not whether it was shown that a substantial proportion of the public in the European Union, merging all the Member States and regions, perceived a mark as an indication of the commercial origin of the goods designated by that mark, but whether, throughout the European Union, it was proved that a significant proportion of the relevant public perceived a mark as an indication of the commercial origin of the goods designated by that mark. A lack of recognition of the sign as an indication of commercial origin in one part of the territory of the European Union cannot be offset by a higher level of awareness in another part of the European Union.

143    Therefore, the Board of Appeal erred, in paragraphs 74 to 78 of the contested decision, in concluding, in essence, that, for the purposes of proving distinctive character acquired through use of a mark throughout the European Union, it was sufficient to show that a substantial proportion of the relevant public in the European Union, merging all the Member States and regions, perceived a mark as an indication of the commercial origin of the goods designated by that mark and that it was not necessary to prove distinctive character acquired through use of a mark in all the Member States concerned.

144    However, even though the Board of Appeal erred in setting out the assessment criterion for proving distinctive character acquired through use of a mark throughout the European Union, it cannot be excluded that it applied it correctly when examining the evidence submitted by the intervener.

145    Accordingly, in the light, inter alia, of the considerations set out in paragraphs 78 to 94 and 119 to 129 above, and taking into account the assessment criterion as stated in paragraph 139 above, it is necessary to examine the assessment by the Board of Appeal of the evidence submitted by the intervener in order to establish that the contested trade mark had acquired distinctive character through use within the meaning of Article 7(3) of Regulation No 207/2009.

–       The assessment by the Board of Appeal of the evidence submitted by the intervener

–       The evidence relating to France

146    Concerning France, it should be noted that, in paragraph 63 of the contested decision, the Board of Appeal took into consideration the data from the survey, carried out by a company specialising in market research, submitted by the intervener. Thus, it is apparent from the survey report in question that the contested trade mark was spontaneously and immediately attributed to the word mark KIT KAT by 45% of respondents (and not 46% as had been indicated by the Board of Appeal). In addition, the Board of Appeal noted that those data were confirmed by the information contained in Table N regarding the market shares held by that mark. In that regard, it should be noted that it is apparent from that table that the sales of the goods designated by that mark in 2006 and 2007 were EUR 17.6 million and EUR 18.4 million respectively, representing 6.1% and 5.6% of the market segment including chocolate bars, except for snacksizes and bitesizes. In addition, it is apparent from that table that those market shares, in 2006 and 2007, corresponded to the fifth and sixth positions in the ranking determined on the basis of the market shares within the segment in question. In the light of that evidence, the Board of Appeal was correct to conclude, in paragraph 71 of the contested decision, that it had been established that the contested trade mark had acquired distinctive character through use in France.

–       The evidence relating to Italy

147    In paragraph 63 of the contested decision, the Board of Appeal took into consideration the data from the survey carried out by a company specialising in market research submitted by the intervener, according to which 47.6% of respondents identifying as purchasers or consumers of sweets or biscuits had spontaneously attributed the contested trade mark to the word mark KIT KAT or the intervener (and not 44.8% as had been stated by the Board of Appeal). The Board of Appeal also referred to the data in Table N, according to which the sales of the product known as ‘Kit Kat 4 fingers’ in 2006 and 2007 were EUR 14.3 million and EUR 13 million respectively, representing 6.6% and 5.9% of the market segment including light indulgence chocolate snacks. Those market shares for those years corresponded to the fifth position in the ranking determined in Table N on the basis of the market shares within the segment in question.

148    In the light of that evidence, the Board of Appeal was correct to conclude, in paragraph 71 of the contested decision, that it had been established that the contested trade mark had acquired distinctive character through use in Italy.

–       The evidence relating to Spain

149    The Board of Appeal emphasised, in paragraph 64 of the contested decision, the particularly strong position of the product known as ‘Kit Kat 4 fingers’ on the national market having regard to Table N. According to that table, in 2006 and 2007 the sales of the product in question — EUR 12.5 million and EUR 13.4 million respectively — represented 22.3% and 22.7% of the market segment including all types of bar, which corresponded to the second position in the ranking determined on the basis of the market shares within that segment. In addition, the Board of Appeal noted that, according to the survey carried out by a company specialising in market research submitted by the intervener, 42.6% of the target group (consisting of persons who were not opposed to purchasing and consuming sweets and biscuits) had recognised, without assistance, on the basis of the contested trade mark, the commercial origin of the product having the shape of that mark.

150    Moreover, the Board of Appeal took into consideration the statements from chambers of commerce submitted by the intervener, including that of Seville (Spain), according to which the contested trade mark was recognised and associated with the commercial origin of the product designated by that mark.

151    In the light of that evidence, the Board of Appeal was correct to conclude, in paragraph 71 of the contested decision, that it had been established that the contested trade mark had acquired distinctive character through use in Spain.

–       The evidence relating to the United Kingdom

152    In paragraph 65 of the contested decision, the Board of Appeal took into consideration the data from Table N and the data from the survey carried out by a company specialising in market research submitted by the intervener. Thus, it is apparent from that table that the sales of the product known as ‘Kit Kat 4 fingers’ in 2006 and 2007 — GBP 26.3 million (around EUR 31.4 million) and GBP 32.8 million (around EUR 39.2 million) respectively — represented 2.7% and 3.2% of the market segment of chocolate bars, whether sold individually or in multipacks. Those market shares corresponded to the third position in the ranking determined on the basis of the market shares within that segment. Regarding the results of the survey, the Board of Appeal observed a spontaneous recognition rate among respondents of 88%.

153    In the light of that evidence, the Board of Appeal was correct to conclude, in paragraph 71 of the contested decision, that it had been established that the contested trade mark had acquired distinctive character through use in the United Kingdom.

–       The evidence relating to Germany

154    The Board of Appeal noted in paragraph 67 of the contested decision that, according to the survey carried out by a company specialising in market research submitted by the intervener, 47% of respondents identifying as at least occasional purchasers or consumers of chocolate-based products had spontaneously associated the contested trade mark with the word mark KIT KAT or the intervener. In addition, it mentioned the fact that the judgment of the Bundespatentgericht (Federal Patent Court, Germany) of 26 May 2004 submitted by the intervener had acknowledged, on the basis of the same survey, that that mark had acquired a certain distinctiveness through use in Germany.

155    In the light of that evidence, the Board of Appeal was correct to conclude, in paragraph 71 of the contested decision, that it had been established that the contested trade mark had acquired distinctive character through use in Germany.

–       The evidence relating to the Netherlands

156    In paragraph 70 of the contested decision, the Board of Appeal took into consideration the survey carried out by a company specialising in market research submitted by the intervener, in which both the methodology and representativeness of the sample, consisting of 514 respondents (representing 0.003% of the total population) in 13 different towns, were deemed appropriate. Accordingly, it considered that, according to that survey, evidence had been adduced of the fact that, regarding the Dutch market, 53% of those respondents had immediately recognised the commercial origin of the goods designated by the contested trade mark on the basis of that mark.

157    In addition, the Board of Appeal noted the data in Table N. According to that table, in 2005, 2006 and 2007, the sales of the product known as ‘Kit Kat 4 fingers’, that is, the sales in 2005 of EUR 8.1 million, the sales in 2006 of EUR 7.9 million, and the sales in 2007 of EUR 7.6 million, represented 5.5%, 4.9% and 4.5% respectively of the market segment consisting of all types of candy bar and other snacks, which corresponded to the fifth, sixth and seventh positions in the ranking determined on the basis of the market shares within that segment for those years.

158    Having regard to that evidence, the Board of Appeal was correct to conclude, in paragraph 71 of the contested decision, that it had been established that the contested trade mark had acquired distinctive character through use in the Netherlands.

–       The evidence relating to Denmark and Sweden

159    Regarding Denmark and Sweden, in paragraph 81 of the contested decision the Board of Appeal took into consideration the surveys carried out by a company specialising in market research submitted by the intervener, in which the representativeness of each sample, consisting of over 1 000 respondents in those two States of less than 10 million inhabitants, was deemed appropriate. Thus, the Board of Appeal considered that, according to those surveys, the rate of unassisted recognition by respondents of the contested trade mark as indicating the commercial origin of the product in question was 48% and 62% respectively. Moreover, it observed that a national trade mark identical to the contested trade mark had been registered in those two countries, which would increase the intensity of the facts and figures resulting from the surveys. Having regard to that evidence, the Board of Appeal was correct to include the Kingdom of Denmark and the Kingdom of Sweden, in paragraph 83 and, by implication, paragraph 88 of the contested decision, among the Member States in whose territory it had been established that the intervener was identified as the commercial origin of the product having the shape of the contested trade mark.

–       The evidence relating to Finland

160    In paragraph 81 of the contested decision, the Board of Appeal noted that the unassisted recognition rate of 30% apparent from the survey submitted by the intervener was not particularly high. Such a rate is lower than the recognition rates in other Member States, including the other Nordic countries. Furthermore, the Board of Appeal incorrectly referred to Table N, which does not show data relating to Finland.

161    However, as EUIPO contends, it should be noted that the intervener submitted other information relating to the use of the contested trade mark in Finland, as mentioned in paragraph 10 of the contested decision in particular. That information includes the launch date in Finland of the product known as ‘Kit Kat 4 fingers’ in 1991, television advertising materials showing, at least partially, the contested trade mark, and an overview of sales volumes, turnover and advertising expenditure between 2001 and 2007.

162    It is true that, as the applicant correctly maintains, those items of evidence are not in themselves capable of establishing acquisition of distinctive character through use of the contested trade mark, particularly since that mark was not promoted in isolation but together with, inter alia, the word mark KIT KAT.

163    However, they show long-standing use of the contested trade mark in Finland. In addition, although, in the absence of any indication as to the exact date and television channels on which the television advertising was broadcast and the time and frequency of such broadcasts, it is impossible to measure the impact of that advertising, those materials testify to the fact that that mark was the subject of a mass communication and that investments were made to promote the mark on the Finnish market. Even without certified quantification of those investments, it can be inferred that significant sums had to be invested, in particular in producing the television advertising and purchasing broadcasting time on television channels, for which the rates per second can be particularly high. The data relating to advertising expenses submitted by the intervener can therefore be regarded as evidence confirming that finding, even if they cannot, as purely internal data, prove the amount of such expenditure.

164    Having regard to that evidence, the Board of Appeal was correct to include the Republic of Finland, in paragraph 83 and, by implication, paragraph 88 of the contested decision, among the Member States in whose territory it had been established that the intervener was identified as the commercial origin of the product having the shape of the contested trade mark.

–       The evidence relating to Austria

165    In paragraph 82 of the contested decision, the Board of Appeal took into consideration the survey carried out by a company specialising in market research submitted by the intervener, in which both the methodology and representativeness of the sample, consisting of 264 respondents (representing 0.003% of the total population), were deemed appropriate. It noted the results of that survey showing that the rate of unassisted recognition by respondents of the contested trade mark as indicating the commercial origin of the product in question was 54%. In addition, it made reference to the data in Table N, which demonstrate the weak, but consistent presence of that mark on the Austrian market: in 2005, 2006 and 2007, sales of the product known as ‘Kit Kat 4 fingers’, namely sales of EUR 1 million in 2005, EUR 1.3 million in 2006 and EUR 1.4 million in 2007, represented 1.7%, 2% and 2.1% respectively of the market segment consisting of all types of bar, which corresponded to the 19th, 17th and 16th positions in the ranking determined on the basis of the market shares within that segment for those years.

166    Moreover, as EUIPO contends, it should be noted that the intervener submitted other information relating to the use of the contested trade mark in Austria. That information includes the launch date of the product known as ‘Kit Kat 4 fingers’ in 1988, television advertising materials showing, at least partially, the contested trade mark, and an overview of sales volumes, turnover and advertising expenditure between 2000 and 2007. For the same reasons as those set out in paragraph 161 above, although, as the applicant correctly maintains, that evidence is not capable in itself of establishing acquisition of distinctive character through use of the mark, it testifies to the long-standing use of that mark in Austria, the fact that that mark has been the subject of a mass communication, and the fact that investments have been made to promote it on the Austrian market.

167    Having regard to that evidence, the Board of Appeal was correct to include the Republic of Austria, in paragraph 83 and, by implication, paragraph 88 of the contested decision, among the Member States in whose territory it had been established that the intervener was identified as the commercial origin of the product having the shape of the contested trade mark.

–       Findings regarding the Board of Appeal’s assessment

168    First of all, in paragraph 79 of the contested decision, the Board of Appeal stated that, in 2007, the combined population of the Federal Republic of Germany, the Kingdom of Spain, the French Republic, the Italian Republic, the Kingdom of the Netherlands and the United Kingdom of Great Britain and Northern Ireland represented 83% of the total population of the European Union composed of the 15 Member States to be taken into account. Relying on the market survey data submitted in respect of those states and referred to in paragraphs 146 to 158 above, it considered that, among the total population of the European Union, the rate of immediate recognition of the intervener as the commercial origin of the product having the shape of the contested trade mark was 44.8%.

169    Next, in paragraph 83 of the contested decision, the Board of Appeal considered, taking into account the data from the market surveys conducted in Denmark, Austria, Finland and Sweden, referred to in paragraphs 159 to 167 above, that the percentage of the total population of the European Union who immediately identified the intervener as the commercial origin of the product having the shape of the contested trade mark was 48.6%. It therefore indicated, in paragraph 88 of the contested decision, that those figures constituted almost 50% of the public of the Member States, representing almost 90% of the population of the European Union.

170    In paragraphs 85 and 86 of the contested decision, the Board of Appeal analysed the evidence submitted by the intervener concerning Belgium, Ireland, Greece and Portugal, in respect of which no market survey had been submitted.

171    The Board of Appeal referred to the information contained in Table N and the advertising materials, particularly the television advertising materials, concerning Belgium, Ireland, Greece and Portugal.

172    By contrast, other information submitted by the intervener relating to the use of the contested trade mark in those Member States, mentioned in paragraph 10 of the contested decision in particular and referred to by EUIPO and the applicant in their written pleadings, were not analysed by the Board of Appeal.

173    In that regard, it must be pointed out that the Board of Appeal did not explicitly answer the question whether it had been established that the contested trade mark had acquired distinctive character in Belgium, Ireland, Greece and Portugal. However, it is apparent from a combined reading of paragraphs 83 and 88 of the contested decision that those territories were not included among those of the Member States in respect of which the Board of Appeal considered that it had been established that the intervener was identified as the commercial origin of the product having the shape of the contested trade mark.

174    Lastly, on the basis of those considerations, the Board of Appeal concluded, in paragraph 90 of the contested decision, that the intervener had shown that the contested trade mark had acquired distinctive character through use in a substantial part of the territory in which that mark had been devoid of such character ab initio.

175    As has been stated in paragraph 139 above, in the case of a mark which, like the contested trade mark, does not have inherent distinctive character throughout the European Union, the distinctive character acquired through use of that mark must be shown throughout the territory of the European Union, that is, in all the Member States concerned.

176    Consequently, the Board of Appeal erred in concluding, in paragraph 92 of the contested decision, that the intervener had shown that the contested trade mark had acquired distinctive character through use in the European Union, given that it had shown such distinctiveness only in a substantial part of the territory of the European Union, as had been stated in paragraph 90 of that decision.

177    Although it had been established that the contested trade mark had acquired distinctive character through use in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the United Kingdom, 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 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, inter alia, Belgium, Ireland, Greece and Portugal and without analysing the evidence adduced in respect of those Member States.

178    In those circumstances, the Board of Appeal erred in law in concluding, in paragraph 92 of the contested decision, that the contested trade mark had acquired distinctive character through the use that had been made of it in the European Union and that it could not be declared invalid for having been registered in breach of Article 7(1)(b) of Regulation No 207/2009.

179    Having regard to all of the foregoing, the first plea in law must be upheld and the contested decision must be annulled. It is unnecessary to examine the second and third pleas in law relied on by the applicant.

 Costs

180    Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

181    As the intervener has been unsuccessful, it must be ordered to bear its own costs.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 December 2012 (Case R 513/2011-2);

2.      Orders EUIPO to bear its own costs and to pay those incurred by Mondelez UK Holdings & Services Ltd;

3.      Orders Société des produits Nestlé SA to bear its own costs.

Dittrich Schwarcz Tomljenović

Delivered in open court in Luxembourg on 15 December 2016.

E. CoulonA. Dittrich

Registrar       President

Table of contents

Background to the dispute

Forms of order sought

Law

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

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

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

Third part of the first plea in law, concerning the lack of use of the contested trade mark as an indicator of origin and the insufficient evidence provided in that regard

– The evidence relating to the acquisition of distinctive character through use of the contested trade mark

– The examination by the Board of Appeal of whether distinctive character has been acquired through use of the contested trade mark by virtue of that mark

– The decision of the United Kingdom Intellectual Property Office of 20 June 2013

Fourth part of the first plea in law, concerning the lack of proof of distinctive character acquired through use of the contested trade mark throughout the European Union

– The date to be taken into consideration for the purposes of determining whether the contested trade mark has acquired distinctive character through use

– The extent of the territory in which distinctive character acquired through use of the contested trade mark must be shown

– The assessment by the Board of Appeal of the evidence submitted by the intervener

–  The evidence relating to France

–  The evidence relating to Italy

–  The evidence relating to Spain

–  The evidence relating to the United Kingdom

–  The evidence relating to Germany

–  The evidence relating to the Netherlands

–  The evidence relating to Denmark and Sweden

–  The evidence relating to Finland

–  The evidence relating to Austria

–  Findings regarding the Board of Appeal’s assessment

Costs

* Language of the case: English.