February 2005
How long must Nestle wait before it can "Have a Break?"
Nestle have again been refused their trade mark application for "Have a Break", as the slogan was seen to be devoid of distinctive character. As to whether or not it had acquired distinctive character through its use, the European Court of Justice was asked to clarify the position on this. The court decided that it was possible to acquire distinctive character under certain circumstances but the hearing officer was not convinced here that the slogan "Have a Break" on its own had achieved this.
Nestle owns trade mark registrations for both the Kit Kat logo and the slogan "Have a break … Have a Kit Kat". Nestle applied to register only the words "Have a Break" as a UK trade mark back in 2002. Mars filed an opposition and the hearing officer refused the application to Nestle. The High Court affirmed this decision. On appeal in 2003, the Court of Appeal agreed that "Have a Break" was devoid of distinctive character. As to whether or not it had acquired distinctive character through its use, was questionable and the ECJ was asked to clarify the position on whether a mark can acquire distinctive character "following or in consequence of the use of that mark as part of or in conjunction with another mark".
The Advocate General was of the opinion that while elements of a mark which are essential to the whole parent mark may be able to acquire distinctiveness, that is, its use may cause consumers to instinctively connect it with the complete slogan, "it appears unlikely that inessential elements, used separately, will develop the requisite distinctive character". However, this alone was regarded as insufficient to prove distinctive character, in that, it needed to be demonstrated that a product or service designated by the mark would in fact be attributed by the relevant consumers to the manufacturers of Kit Kat specifically.
BRIFFA Comment:
Although not binding on the judges in the European Court of Justice and contrary to the views held in the UK courts, in the Advocate General's opinion, use of a mark as part of a composite mark can also enable that part to acquire distinctive character. However, this was qualified, in that, the part on its own must signify a particular undertaking to the relevant consumers. This case indicates the growing significance of phrases and slogans in the branding of products and services. They appear in advertising more and more, often without being part and parcel of the whole parent mark and even without the house mark itself. With clever marketing as well as increased singular use of a part of a composite mark, the relevant consumers are more likely to identify that part as a trade mark in its own right and as a result it may become regarded as distinctive. This would increase a brand-owner's chances of having a non-distinctive part of a composite mark successfully registered.