It’s been 10 years since Nestlé first applied to register the phrase ‘Have a break’ as a trade mark alongside its existing registration ‘Have a break – have a Kit Kat’. On its umpteenth appeal against Mars’ serially successful opposition to the move, was it finally victorious before the European Court of Justice?
Topic: Intellectual property
Who: Nestlé and Mars
Where: The European Court of Justice
When: July 2005
The latest episode in the 10 year long saga of Nestlé's efforts to register "Have a break" as a trademark for confectionary.
This was in the form of a judgement of the European Court of Justice.
Up until then it had been defeat all the way for Nestlé since it first applied in 1995 to register "Have a break." In the teeth of Mars' implacable opposition, all Nestlé's appeals were rejected on the basis that this phrase, as opposed to the complete phrase "Have a break have a Kitkat" was not sufficiently distinctive on its own to merit registration.
All tribunals dealing with the issues had taken the view that the phrase "Have a break" had simply not been used sufficiently on its own to stand on its own two feet as a distinctive trademark. Nestle carried on the fight, and in the European Court of Justice, it prevailed.
There can be no guarantee of outright victory because the matter now has to go back to the to the UK Court for the final verdict. However, the indications are very positive for Nestlé.
The question before the ECJ was whether usage of the phrase "Have a break" within the existing registered trade mark "Have a break have a Kitkat" was sufficient to render distinctive the three words "Have a break".
Having examined the wording of the EU directive, the ECJ decided that there was no reason why distinctive character could not be acquired by use of part of a registered trade mark that contained other words also.
It was then a matter of deciding whether, on the basis of that use, the mark had acquired the relevant distinctiveness. This would have to be judged bearing in mind the following items which could be taken into consideration: the market share held by the mark, how intensive, geographically wide spread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, reporting the relevant class of persons who because of the mark identified goods as originating from a particular undertaking and statements from Chambers of Commerce and industry or other trade and professional associations.
Why this matters:
This apparent major breakthrough for Nestlé may have considerable implications for other owners of registered trade marks which comprise a number of different elements. As a result, we may see an exponential rise in trade mark applications by those jumping on the Nestlé "Have a break" bandwagon.