Yesterday's Opinion of AG Wathelet in Case C-215/14, Société des Produits Nestlé SA v Cadbury UK Ltd, a request for a preliminary ruling from the High Court of Justice of England & Wales, has already made the headlines.

Nestlé sought registration in the UK for the mark below, which consists of its (I think without objections) famous KIT KAT product (a 4-bar chocolate-covered wafer snack, in technical terms).

Following opposition proceedings initiated by Cadbury UK Ltd, the matter was reffered to the CJEU. The core matter is whether, in order to establish acquired distinctiveness, a trademark applicant must prove that a significant proportion of the relevant circle of consumers rely] upon the mark applied for (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?  

The AG's Opinion can be summarised in the phrase that, for the purposes of successfully claiming acquire distinctiveness, the trademark applicant  "must prove that only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services at issue". It would not be sufficient to prove that the relevant class of persons recognises the trade mark in respect of which registration is sought and associates it with the applicant’s goods or services.

If AG's Opinion is adoted by the CJEU, it would give a very clear guidance - and not much room to play - for market surveys used to establish acquired distinctiveness of marks in the market. It may also mean that marketing departments should diversify and enrich their strategies,... and perhaps also start listening to lawyers advising that it is hard to protect a mark which always appears in company.

It would also raise the bar (how fitting a word) on the type of evidence required to prove such acquired distinctiveness for marks which are not used solo in the market, but enjoy the company of other distinctive indications. In other words, tons of invoices, advertising leaflets and promotional 'exercises' may just not do the trick for product shape marks.

It seems rather hard to argue with the AG's opinion; the mark for which registration is sought, and that mark alone, should be proven to have acquired distinctiveness through use. On the other hand, one may wonder whether this means that it is practically almost insurmountable to prove acquired distinctiveness in cases of marks such as this, while in fact there may just be such distinctiveness. It is reported that Nestlé had, in the context of the UK proceedings, submitted a survey according to which 90% of people shown a picture of the bar, without any names or symbols embossed on it, mentioned KitKat in their comments, but it was held that recognition and distinctiveness, i.e. ability to let consumers rely on the mark as an origin indicator are two different things. But how much different?