Most Britons would respond to the phrase “have a break” with the words “have a Kit Kat”. The slogan “Have a break have a Kit Kat” has been used in the advertising of Kit Kat since 1957. The slogan has been Nestlé’s registered trade mark for many years (as have the words KIT KAT). But Nestlé’s attempt to register the words HAVE A BREAK on their own has been successfully opposed by Mars, who can now launch a competitive chocolate bar product called Have a Break.
Nestlé applied to register HAVE A BREAK in 1995 in respect of chocolate and other products. Mars filed a notice of opposition in 1998 and a hearing took place in the Trade Marks Registry on 4 February 2002. Mars’ opposition to Nestlé’s application was upheld and Nestlé appealed to the High Court.
The Hearing Officer in the Trade Marks Registry held that HAVE A BREAK lacked any inherent distinctiveness as a trade mark for a chocolate snack. He also rejected Nestlé’s claim that the mark had acquired a distinctive character as a result of Nestlé’s use of it. Mr Justice Rimer, delivering his judgment in the High Court on Monday, found no reason to interfere with these findings and dismissed Nestlé’s appeal.
The concept of distinctiveness is fundamental in the rarefied world of trade marks. The main function of a trade mark is to distinguish goods or services of the trade mark owner from goods or services having a different origin. A trade mark will therefore not be registered if it is not distinctive.
Because most consumers eat snacks during their breaks the Hearing Officer concluded that HAVE A BREAK had no inherent distinctiveness in relation to snack products. Mr Justice Rimer found this a reasonable conclusion.
Nestlé had tried to prove that even if HAVE A BREAK was not inherently distinctive, they had made it their own – it had acquired a distinctive character as a result of their use of it.
Nestlé failed on this front as well. There had only been minimal independent use by Nestlé of the mark HAVE A BREAK. It was almost always used in the context of the whole slogan. The Hearing Officer decided that the words had not been made distinctive by Nestlé and Mr Justice Rimer agreed with this. The Hearing Officer did not believe that a significant proportion of the public, if presented with a chocolate bar called HAVE A BREAK, would believe that it originated from the makers of KIT KAT. Nestlé’s survey, in his view, only showed that respondents would be “reminded” of Kit Kat, nothing more.
The Kit Kat case is surprising in the light of recent developments in Europe concerning slogan trade marks. The UK Trade Marks Registry issued detailed new guidance on slogans in June 2002 in the light of two European cases which suggested that it would be easier to register slogans as trade marks (the Baby-Dry case and the case of Das Prinzip Der Bequemlichkeit). What is clear, however, is that advertisers should not be deterred by the Kit Kat case from applying to register slogans as trade marks. So long as a slogan has some distinctive quality an application should be considered.