Judgment of the General Court (Fifth Chamber) of 15 December 2016 — Mondelez UK Holdings & Services v EUIPO — Société des produits Nestlé (Shape of a chocolate bar)
(Case T‑112/13)
(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)
1. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) of Regulation No 207/2009 — Three-dimensional mark — Shape of a chocolate bar
(Council Regulation No 207/2009, Arts 7(1)(b), and 52(1)(a))
(see paras 24, 25, 42-44, 58-61, 101, 117, 177, 178)
2. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Partial use — Effect — Concept of ‘parts of the products or services’ covered by the registration
(Council Regulation No 207/2009, Art. 42(2) and (3))
(see paras 26, 27)
3. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) of Regulation No 207/2009 — Exception — Distinctive character acquired through use — Burden of proof
(Council Regulation No 207/2009, Arts 7(1)(b), and 52(1)(a))
(see paras 55, 76)
4. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) of Regulation No 207/2009 — Exception — Distinctive character acquired through use — Criteria for assessment
(Council Regulation No 207/2009, Art. 7(3))
(see paras 67-72, 77, 93)
5. EU trade mark — Definition and acquisition of the EU trade mark — Assessment of the registrability of a sign — EU rules only taken into account — Earlier registration of the mark in certain Member States or third countries — Decisions not binding EU bodies
(Council Regulation No 207/2009)
(see paras 108, 109)
6. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) of Regulation No 207/2009 — Exception — Distinctive character acquired through use — Trade mark devoid of distinctive character throughout the EU — Acquisition by use also throughout the EU
(Council Regulation No 207/2009, Arts 1(2), and 7(3))
(see paras 119-129, 139)
Re:
| 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. |
Operative part
The Court:
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. |