Société des produits Nestlé SA v Mars UK Ltd

Nestlé owns the registered trade mark ‘Have a Break …Have a Kit Kat’. In 1995 Nestlé applied to register the phrase ‘Have a Break’ as a separate trade mark. Mars opposed the application, contending that the phrase was devoid of distinctive character. Nestlé argued that the phrase had acquired the necessary distinctive character though its use in the phrase ‘Have a Break … Have a Kit Kat’. Nestlé’s application was rejected by both the Registry and the High Court on the grounds that the mark was not inherently distinctive, and could only proceed to registration if it had acquired distinctiveness through use. Nestlé had adduced extensive evidence of the use of the composite phrase but had little evidence of the use of the mark applied for alone. The Court of Appeal agreed with the earlier findings that the mark was not inherently distinctive, but made a reference to the ECJ on whether distinctive character could be acquired through use as part of, or in conjunction with, another mark.

Whether “the distinctive character of a mark referred to in Article 3(3) of the EC Trade Marks Directive…[may] be acquired following or in consequence of the use of that mark as part of or in conjunction with another”.

Answering the question in the affirmative: Article (3)(3) contains no restriction on the way in which a mark may gain its distinctive character. Thus the 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. In both cases it is sufficient that, in consequence of such 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.” Matters capable of demonstrating that the mark has come to identify a product or service may include: market share; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods’ originating undertaking; and statements from industry.

An important decision which confirms that what matters most for the purposes of achieving registration of a trade mark is whether the mark is in fact distinctive, not the manner in which it became distinctive. The case is of great significance for all traders and businesses, particularly those who use slogans as trade marks. They should now consider registering individual parts of their slogans, including shapes, colours and sounds. It is likely that the Registry and the Court will see more survey evidence as proprietors seek to demonstrate distinctiveness of the more ‘catchy’ parts of their slogans and that more shape and colour marks in particular will be registered. This case has been sent back to the UK Trade Marks Registry for a determination of whether Nestle has in fact demonstrated the necessary distinctiveness of HAVE A BREAK.

Judgment