Back in 1995 Nestlé applied to register HAVE A BREAK as a trademark, to go with their HAVE A BREAK, HAVE A KIT KAT registrations. Mars opposed.
Who: Societe Des Produits Nestlé SA -v- Mars UK Limited
When: December 2002
Where: Chancery Division of the High Court, London
Since 1957 Nestlé had been using the phrase "Have a break" in connection with advertising for its Kit-Kat product. A 2002 survey showed that 98% of Britons would respond to "Have a break" with "Have a Kit-Kat" and it was the combination of these two phrases, in slightly differing forms, which had been the subject of UK registered trade marks since 1978. In 1995, however, Nestlé filed an application to register only the words "Have a break" as a UK trademark. Mars opposed this.
Mars reminded the Court that to be registrable, a trademark had to have either innate or acquired distinctiveness. This had to be capable of taking it out of the realms of a purely descriptive, generic English phrase and into the category of a branding device which was distinctive in the minds of the public of a product from one particular manufacturer. There was no innate distinctiveness in the phrase "Have a break", the court agreed, and Nestlé were not able to produce enough evidence of independent use of the words "Have a break" (in isolation from "Have a Kit Kat") to establish that distinctiveness had been acquired by usage. As a result, and subject to any appeal by Nestlé, Nestlé were denied their registration of "Have a break" in respect of "chocolate, chocolate products, confectionery, candy and biscuits" and, at least so far as possibly conflicting trademark registrations were concerned, the way was clear for Mars to launch its own planned "Have a break" bar.
Why this matters:
Apart from the seven years it took this case to get to court, another aspect of interest here is that at first glimpse, the decision appears perverse. Compare it with the recent European Court of Justice decision that the phrase "Baby-dry", when used in connection with nappies, was innately distinctive and therefore did not even have to be shown to have acquired distinctiveness to be registrable as a community trademark. However, the registration authority has to look at the words on the page when considering a trademark application, and although one might say "Baby's dry" in relation to the product in question, it is far less easy to envisage an individual saying or writing "baby-dry" in this connection. "Have a break" on the other hand is obviously a well used colloquialism, and this decision underlines the requirement that if a word or connection of words is not innately distinctive, clear evidence of independent branding use of a trademark, without any other suffix, prefix, or logo, has to be shown to the satisfaction of the Court.
However, this may not be the end of the story. Nestlé will no doubt be considering not only whether to take its case to the Court of Appeal, but whether it might still have a case against Mars' projected "Have a break" product in "passing off". But this, as they say is (or might be in 2003), another story.