The slogan "Have a Break … Have a KitKat" and the name "KitKat"
have been registered trade marks for many years. In 1976, the then
owner of the brand attempted to register the phrase "Have a Break"
on its own, but failed. Current owner Néstle tried for registration
in 1995 but it was opposed by rival confectioner Mars UK Ltd.
That application was refused because the phrase was considered
"devoid of any distinctive character" – so Nestlé went to
court.
Eventually the Court of Appeal had to consider firstly whether
the phrase on its own was devoid of distinctive character, and
secondly, if it was, whether it had acquired a distinctive
character before the application for a trade mark was made, through
association with “Have a KitKat”.
The Trade Marks Directive says that a mark devoid of distinctive
character cannot be registered. But a mark which is not inherently
distinctive may acquire distinctive character through use.
The Court of Appeal decided that the expression "Have a Break"
is devoid of inherent distinctive character and that, consequently,
it may be registered only if it has acquired distinctive character
through use.
Since the phrase "Have a Break" was essentially used as part of
the mark "Have a Break … Have a KitKat" and not, genuinely, as an
independent trade mark, the Court of Appeal asked the Court of
Justice of the European Communities whether the requisite
distinctive character may be acquired from use as part of or in
conjunction with another mark.
The Court said yes: the distinctive character required for
registration of a mark may be acquired through use of that mark as
part of or in conjunction with a registered trade mark.
It pointed out that a mark has distinctive character when it is
capable of distinguishing the goods or services of one undertaking
from those of other undertakings. Distinctive character must be
assessed in relation, on the one hand, to the goods or services in
respect of which registration is applied for and, on the other, to
the presumed expectations of an average consumer of the category of
goods or services in question, who is reasonably well-informed and
reasonably observant and circumspect.
In order to acquire distinctive character through use, the mark
must be used as a trade mark However, that does not mean that the
mark in respect of which registration is sought need necessarily
have been used independently. It is merely necessary that, by
consequence of use, the relevant class of persons actually perceive
the product or service, designated exclusively by the mark applied
for, as originating from a given undertaking.
Such identification, and thus acquisition of distinctive
character, may be as a result both of the use, as part of a
registered trade mark, of a component thereof and of the use of a
separate mark in conjunction with a registered trade mark.
Nestlé told OUT-LAW:
"We are delighted at the ruling by the
European Court of Justice who said in principle it is possible for
part of a word mark to be registered, provided it has acquired
distinctive character on its own. However, the final decision
rests with the UK Registry and we now await their decision."
The European Court said that the national Court must determine
whether the mark "Have a Break" has come to identify the product or
service concerned. The European Court of Justice pointed out that
the relevant factors must be assessed globally and, in the context
of that assessment, the following items may be taken into
consideration:
- the market share held by the mark;
- how intensive, geographically widespread and long-standing use
of the mark has been;
- the amount invested by the undertaking in promoting the
mark;
- the proportion of the relevant class of persons who, because of
the mark, identify goods as originating from a particular
undertaking; and
- statements from chambers of commerce and industry or other
trade and professional associations.
Nestl invests heavily in its brands and
for the consumer this represents a guarantee of quality. We
therefore believe we should be allowed to protect our brands that
provide this guarantee of quality from Nestlé. In this
particular case, we believe ‘Have a Break’ is, to the consumer, a
badge of origin of Nestl indeed our own research
has proved this."
