For ten years Nestlé has been trying to persuade any trademark judge who would listen that it should be entitled to register ‘Have a break’ as a trademark. Now it’s the Advocate General of the European Court of Justice. Any change?
Nestlé and Mars UK Limited
The European Court of Justice
Approaching the end game in its battle to register "Have a break" as a trademark, Nestlé could not have been pleased when the Advocate General to the ECJ published her opinion.
On the other hand, it had been uphill all the way ever since Nestlé filed an application to register the phrase as a UK trade mark in 1995. Mars opposed the application, primarily on the basis that the words were "devoid of any distinctive character".
As previously reported on marketinglaw.co.uk, all the tribunals that dealt with the question, including the Court of Appeal, pronounced against Nestlé, finding that the phrase was "inherently devoid of distinctive character".
Undaunted, Nestlé took the case to the European Court of Justice and following the normal procedures, the Advocate General has supplied an "opinion" to the ECJ judges, who will now go on to hand down their final verdict in due course. As it is relatively rare for the ECJ to go against the Advocate General, Advocate Juliane Kokott's reasoning is not to be ignored.
"Part of a composite" problem
The principal difficulty Nestlé faced was that the phrase "have a break" was a composite part of a larger piece of branding which was "Have a break .. have a KitKat". Both this longer phrase and the mark "KitKat" had already long since achieved registered trademark status. The $64,000 question was whether the three words "Have a break" on their own were distinctive enough to qualify for registration.
AJ Kokott said that in cases like this, "relevant consumer groups must be shown to understand that the element in question, if used separately, designates a product as originating from a specific undertaking". It may well be that due to longstanding use of the larger mark "Have a break, have a Kit Kat," consumers would associate "Have a break" with that longer phrase.
This was not enough, however, for Nestlé to win the day. They had to show that the three words "Have a break" in isolation immediately made consumers think of (1) Nestlé as the source of the product and not (2) "Have a break have a KitKat". Based on the evidence in front of her, Advocate Kokott did not believe the evidence satisfied this requirement.
Why this matters:
There is still an outside chance that Nestlé will prevail at the last gasp, but the auguries are not good. It might have been different if the phrase "Have a break" had been used on its own as a piece of branding for a substantial period of time, but apparently the evidence does not support this and Nestlé's competitors are clearly far too keen to ensure that a phrase they might well want to use generically/descriptively in their own advertising is not monopolised by a competitor.