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:
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."
