In the context of the KitKat shape mark saga, in Société des produits Nestlé SA v Mondelez UK Holdings & Services Ltd and another (Joined Cases C-84/17 P, C-85/17 P and C-95/17 P), the CJEU provided significant guidance on the evidence required to prove acquired distinctiveness throughout the EU.
The Court confirmed that where a mark is devoid of inherent distinctive character throughout the EU, it is not sufficient to prove that the mark has acquired distinctive character through use in a significant part of the EU. In view of the unitary character of the EUTM, the CJEU, predictably, confirmed that the trade mark owner must show that the mark at issue has acquired distinctiveness throughout the entire EU.
However, the decision makes clear that this does not mean (as some commentators have predicted) that the trade mark owner must adduce separate evidence for each and every Member State. The CJEU sided entirely with the Opinion of Advocate General Wathelet, and confirmed that the unitary evidence provided can be relevant with regard to several Member States, or even to the whole of the European Union.
The CJEU confirms that the same evidence, for example, can be relied on for several Member States in circumstances where the trade mark owner has grouped several Member States together in the same distribution network and has treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has a sufficient knowledge of the products and services that are present on the national market of the second.
The CJEU judgment clearly upholds the principle of extrapolation of evidence and is good news for trade mark owners. It is now clear that EUTM owners trying to show acquired distinctiveness are not expected, as a matter of a box ticking exercise, to assume a disproportionate and entirely artificial exercise of evidence collection for each and every Member State. Where, due to market proximity or other reasons, the same evidence can indicate acquired distinctiveness in a number of Member States, there is nothing to preclude the relevant authority from taking such evidence into account. Instead market realities must be considered when judging the evidence as a whole.
However, when relying on such unitary evidence for showing acquired distinctiveness in several Member States (or even the entire EU), trade mark owners are well advised to explain clearly why this evidence is capable of establishing such acquisition throughout the relevant Member States.