Nestlé gets a break in slogan battle
13 July 2005The European Court of Justice (ECJ) has ruled in favour of Société des produits Nestlé SA (Nestlé) in its battle with Mars UK Limited (Mars) over the registration of the 'HAVE A BREAK' slogan.
The case will now be remitted to the United Kingdom Trade Marks Office (UTMO) to determine whether Nestlé’s use of its entire slogan, 'HAVE A BREAK HAVE A KIT KAT', has resulted in 'HAVE A BREAK' acquiring a secondary meaning.
Background
As reported in a previous article, this case involved an application by Nestlé (the owner of trade mark registrations for ‘KIT KAT’ and ‘Have a break … Have a Kit Kat’) to register the 'HAVE A BREAK' slogan as a trade mark in the United Kingdom.
The application was initially rejected by the UTMO on the basis that it was devoid of distinctive character. However, after evidence of use was provided by Nestlé, the application was accepted in relation to chocolate, chocolate products, confectionery, candy and biscuits.
Mars opposed Nestlé’s application, arguing that Nestlé’s use of the entire slogan 'HAVE A BREAK HAVE A KIT KAT' should not in principle allow Nestlé to obtain registration of 'HAVE A BREAK' on the basis of acquired distinctiveness.
Mars succeeded before the opposition division of the UTMO, where it was found that the use of the whole slogan did not support registration of the shortened slogan. Nestlé appealed to the UK High Court of Justice, but the appeal was dismissed for the same reason.
Nestlé then appealed to the UK Court of Appeal, who referred to the ECJ for guidance on the following point:
‘May the distinctive character of a mark … be acquired following or in consequence of that use of that mark as part of or in conjunction with another mark?’
The ECJ’s decision
The ECJ disposed of the matter briefly. It was made clear that to acquire a distinctive character through use, the use made must be ‘use of the mark as a trade mark’. However, this did not mean that the mark in question must be used independently, and the ECJ pointed out that there was no such requirement in the relevant legislation.
The ECJ stated that the use required must ‘be understood as referring solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking’.
Importantly, the ECJ held that the following two (non-exhaustive) fact scenarios may be sufficient for such an identification to be made:
- use of a registered trade mark, or a component thereof, and
- use of a separate mark in conjunction with a registered mark.
Finally, the ECJ reiterated previously stated factors1 that can be used to assess whether a mark has acquired distinctiveness, namely:
- market share
- the intensity, duration, and geographic reach of use
- the amount of promotion
- the proportion of relevant persons who recognise the mark, and
- statements from chambers of commerce and industry or other trade and professional associations.
Applied to the particular facts, the ECJ’s finding means that the UTMO is now bound to consider whether—through its use of 'HAVE A BREAK HAVE A KIT KAT'—the slogan 'HAVE A BREAK' has come to identify the goods of Nestlé.
Importance of this decision and application to Australian law
Nestlé, and various commentators, had suggested that a finding against Nestlé by the ECJ would put an end to the registrability of various 'new' marks, such as shapes and colours, in Europe on the basis that 'such marks are seldom used by themselves'. Seen in this context, the commonsense approach taken by the ECJ will be welcomed by trade mark owners, as it confirms that evidence of use of a mark (including a slogan or composite mark), while not necessarily conclusive, can be relevant to the distinctiveness of a component part of that mark.
The Australian law on acquired distinctiveness could potentially be seen as having the same ambiguity as the European law. It is likely that the ECJ’s decision—in recognising that distinctive character can be the result of the use of marks used in combination—will provide a strong persuasive influence in Australia in an appropriate case.
Footnotes
- Joined cases C–108/97 and C–109/97 Windsurfing Chiemsee [1999] ECR I–2779.
This article was written by Bill Ladas, Solicitor.
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