[Commons-Law] No Break for Nestle´s Kit-Kat

[Ram]

Dear all,

This is with reference to the developments in the European Court of
Justice (Case C-353/03) past week, wherein it was ruled that Nestle
cannot trademark its slogan "Have a Break...Have a Kit-Kat" because it
lacks specific character.

Advocate General Juliane Kokott delivered her Opinion in Case
C-353/03, the HAVE A BREAK reference to the ECJ from the UK Court of
Appeal. The opinions of the Advocate General are followed in about 80%
of the cases by the full court. A decision is expected within several
months.

According to the Advocate General,  a sign that is used as part of, or
in conjunction with another mark can acquire distinctive character:

§ It is not the practice of Community institutions to refuse
registration to parts of marks which have acquired distinctiveness
through use.

§ Signs must be used in the form it which they are applied for to be
registered. If distinctiveness is said to derive only from the
subsidiary mark's similarity to the principle mark, there can be no
acquired distinctiveness. However, if the distinctiveness derives from
use as part of or in combination with the principal mark, there can be
acquired distinctiveness.

§ In practice it may be difficult to show that an element of a mark
that has only been used as part of another mark has acquired
distinctiveness. The fact that a sign causes consumers to have a
reflex reaction such as to complete the HAVE A BREAK phrase with HAVE
A KIT KAT it not enough on its own. Instead it must be shown that a
product bearing the sign HAVE A BREAK will be attributed to Nestlé. If
consumers just had cause to wonder whether products bearing the HAVE A
BREAK sign were made by Nestlé this would merely give rise to
likelihood of confusion.

Nestle applied in 1995 to have the "Have a Break" phrase registered
for all chocolate products. Rival Mars Inc objected. The case was
brought in Britain, and authorities there blocked the Nestle
application on the grounds that the phrase lacked any inherent
distinctive character. Nestle appealed and the British court asked the
European Court to issue an opinion.

In addition, Nestle has also lost out on another case for getting the
shape of the KIT KAT bar registered as a Community trade mark in EU.
The Board of Appeal upheld the decision not to register the shape on
grounds of lack of inherent and acquired distinctiveness.


warm regards

Ram