Rebecca Ablett: Full plate for the Court of Justice

Rebecca Ablett

Rebecca Ablett serves up a two-course dish of intellectual property delights from Luxembourg.

The IP world has been cooking up quite a storm this summer with two particularly interesting cases featuring on last month’s menu for the Court of Justice of the European Union (the “CJEU”). However, forget your usual summer highlights of BBQs, Aperol spritzes and Soleros, these cases find their origins in a spreadable cheese and Nestle’s famous KitKat.

I’ll take each of these separately – after all, I’m not sure how well a spreadable cheese would compliment a KitKat…

Cheesed off

The ‘wheel’ has been spinning for quite some time in the copyright dispute between Levola Negola BV (“Levola”) and Smilde Food BV (“Smilde”), a case which raises some interesting copyright issues which, until now, have not been directly addressed by the CJEU. As such, the recent opinion of Advocate General Melchior Wathelet has been ‘grately’ received amongst IP professionals and cheese lovers alike.

The dispute began when Levola (the producer of Heksenkaas cheese) brought an action against Smildle (the producer of Witte Wievenkaas cheese) on the basis that Smilde had infringed Levola’s copyright in the taste of its spreadable cheese. The Court of first instance dismissed the action, holding that it was unable to assess whether the taste of Levola’s product was covered by copyright.

Levola appealed and, in May of last year, the Dutch Court of Appeal sisted the proceedings and referred a number of questions to the CJEU concerning the extent to which EU copyright protection could extend to the taste of a food product. More specifically, clarification was sought from the CJEU as to what qualifies as a protectable “work” in terms of EU copyright law, particularly given that the expression “literary and artistic works” in Article 2(1) of the Berne Convention (which is binding on all EU Member States) cites only creations which can be perceived by sight and/or by hearing. The CJEU, amongst other things, was also asked to clarify whether the notion of “work” is affected by the (possible) instability of a food product and/or the subjective nature of the taste experience.

In an eagerly awaited opinion issued by Advocate General Melchior Wathelet last month, the CJEU has been advised to rule that the taste of cheese cannot be protected by copyright. Advocate General Wathelet opined that the notion of “work” is limited to subject matter that can be perceived through the eyes or ears, and that subject-matter must be able to be perceived with precision, stability and objectivity, and this would not be the case of the taste of a food product.

In most cases, the Advocate General’s opinion is followed by the CJEU but I’ll refrain from saying that the wheel has not stopped turning just yet…

Watch this space.

Take a break, have a KitKat

Now that you’re refreshed, we’ll move on from copyright to trade marks and consider an even lengthier dispute. In fact, this one dates back more than a decade.

UK consumers, particularly those with a sweet tooth, will need no introduction to Nestle’s KitKat. However, an introduction might be required to Mondelez’s Kvikk Lunsj, another four-fingered chocolate treat. The two snacks lived harmoniously for over 60 years until 2002 when Nestle applied for a European trade mark for KitKat and a trade mark for the shape of a KitKat. Perhaps somewhat unsurprisingly, there was no issue with the former request. Rather, it was the latter which sparked the ongoing saga.

It took four years before the European Union Intellectual Property Office granted Nestle’s application for trade mark protection for the four fingered KitKat. As you can imagine, this decision was not received positively by Mondelez. In around 2007, the Court battle officially began and, in 2016, the General Court ruled that Nestle had to prove that a KitKat was recognisable in every EU country and that this had not been done for Belgium, Ireland, Greece and Portugal.

Nestle and the EU’s Trade Mark Office appealed against the 2016 decision on the basis that such a level of distinctiveness was not practicable. Mondelez argued that it was wrong to conclude that KitKat had “distinctive character” anywhere.

Last month, the CJEU upheld the 2016 decision to annul the EU-wide trade mark of the KitKat’s shape. The CJEU declared that it is not sufficient to prove that a product has become iconic in “a significant part” of the EU, rather a product’s distinctive character has to be shown throughout the EU.

In response to last month’s judgment, Nestle has said that it plans to continue to seek EU-wide protection and noted that the case will now be sent back to the EU Board of Appeal.

Alas, it looks as though neither party will be taking a break from this dispute just yet. And so the saga continues…

Watch this space (x2).

Rebecca Ablett is a senior solicitor at Burness Paull