Increased protection for advertising slogans?

A-G delivers Kit Kat opinion

Companies will be given greater IP protection for their advertising slogans if the full European Court decision in Societe des Produits Nestle SA v Mars UK Ltd (Case C-353/03) follows the advisory opinion of the adocate general, delivered today.

In the opinion, advocate-general Juliane Kokott said that a sequence of words forming part of a trademarked slogan could in principle acquire the requisite distinctiveness, through use in the slogan, to be registrable as a trade mark in itself.

The case concerned Swiss foodmaking giant Nestle’s claim to the words “Have a Break”, part of its trademarked slogan “Have a Break … Have a Kit Kat”, in relation to all chocolate products.  The application was rejected by the Trade Marks Registry after US rival Mars objected.  The Registry hearing officer said that the three word line was “devoid of any distinctive character” and so lacked “inherent distinctiveness”, and this decision was upheld by the High Court.  The Court of Appeal referred to the ECJ the question of whether “Have a Break” could obtain a distinctive character distinctive from “Have a Break … Have a Kit Kat”.

The A-G’s opinion stated that Nestle would be able to trade mark “Have a Break” if it could establish that consumers would understand the phrase to designate a product from the manufacturers of Kit Kat.  The suggestion in the opinion is that Nestle would be unable to demonstrate such an association.

This opinion raises many questions about trade marks and their use, and it will be interesting to see if the ECJ takes the usual course of following the A-G’s opinion.  If it does, many companies with well known slogans will be likely to follow Nestle in applying to register parts of their slogans as trade marks.